Ex Parte Do et al

Patent Trial and Appeal Board

Jun 29, 2016

12194752 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/194,752 08/20/2008
37945 7590 07/01/2016
DUKEW, YEE
YEE AND AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Lydia Mai Do
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
A US920080l69US1 7186
EXAMINER
BRAY, STEPHEN A
ART UNIT PAPER NUMBER
2621
NOTIFICATION DATE DELIVERY MODE
07/01/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LYDIA MAI DO, TRAVIS M. GRIGSBY,
PAMELA ANN NESBITT, and LISA ANNE SEACAT
Appeal2014-005091
Application 12/194,752
Technology Center 2600
Before ST. JOHN COURTENAY III, MELISSA A. HAAPALA, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 2.
Appeal2014-005091
Application 12/194,752
STATEMENT OF THE CASE
Introduction
Appellants' present application relates to selectively configuring an
interactive device based on the orientation of a user relative to a reference
position of a surface of the device. Spec. ,-i 1. Claim 1 is illustrative of the
invention and reads as follows:
1. In association with a computer operated interactive
device having a surface, wherein the interactive device is
responsive to contact between its surface and respective persons
and objects, and is adapted to selectively display images upon
its surface, a method comprising the steps of:
enabling said interactive device to access specified
information pertaining to a user;
selectively configuring said device for interaction with
said user, during a time related to performance of a specified
activity by said user;
using at least some of said specified user information to
determine the orientation of said user with respect to a reference
position of said surf ace, at a time related to performance of
said specified activity; and
performing a task that is related to the determined
orientation of said user with respect to said reference position of
said surface.
The Examiner's Rejections
Claims 21-23 stand rejected under 35 U.S.C. § l 12(a) as failing to
comply with the written description requirement. Final Act. 7-8.
Claims 1, 7, 10-13, and 17 stand rejected under 35 U.S.C. § 102(a) as
anticipated by Hofmann (US 7,871,321 B2; Jan. 18, 2011). Final Act. 8-14.
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Application 12/194,752
Claims 2-5, 8, 9, 14-16, and 18-20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hofmann and Kim (US 2002/0019258 Al;
Feb. 14, 2002). Final Act. 14-20.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Hofmann, Kim, Hoch (US 2004/0160336 Al; Aug. 19, 2004), and Pryor
(US 2008/0129704 Al; June 5, 2008). Final Act. 20-22.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Hofmann and Dohta (US 2008/0076567 Al; Mar. 27, 2008). Final Act.
22-23.
ANALYSIS
Written Description
Appellants argue the Examiner erred in rejecting claims 21-23 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement because the claimed feature "an angular position of
said user with respect to said reference position on said surface" is supported
by the Specification. See App. Br. 6-8; Reply Br. 2. In particular,
Appellants argue the Specification repeatedly recites determining the
orientation of a user and the plain meaning of orientation to an ordinarily
skilled artisan includes the angular position of an object relative to a
reference position. App. Br. 7.
The Examiner responds that when the term orientation is discussed in
the Specification, there is no mention of angular position or any other means
to define the orientation of the user with respect to a reference point. Ans. 2.
The Examiner further responds that orientation is a broad term that can be
determined in manners other than using an angular position, such as by using
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a Cartesian coordinate system to define the position of a user. Ans. 2-3.
The Examiner concludes that because the Specification fails to define how
the orientation of the user is related to the reference position, any claim
language further defining the orientation of the user constitutes new matter.
Ans. 3.
We are not persuaded by Appellants' argument that the Examiner
erred. As found by the Examiner, the Specification never describes how to
determine the orientation of the user with respect to a reference position.
Instead, the Specification merely states that the orientation is determined.
We agree with the Examiner that a user's orientation may be determined in a
number of ways, including ways that do not relate to the angular position of
the user. Accordingly, the Specification's use of the term "orientation" does
not support a narrower definition such that the orientation may only be
determined using the angular position of a user with respect to a reference
position. We, therefore, are not persuaded the Examiner erred in rejecting
claims 21-23 under 35 U.S.C. § 112, first paragraph, for failing to comply
with the written description requirement.
Anticipation - Claims 1, 12, 13, and 17
Appellants argue the Examiner erred in rejecting claim 1 as
anticipated by Hofmann because Hofmann does not disclose "using at least
some of said specified user information to determine the orientation of said
user with respect to a reference position of said surface, at a time related to
performance of said specified activity." See App. Br. 10-12. In particular,
Appellants argue Hofmann discloses determining the position of a user
instead of determining the orientation of a user. App. Br. 10. According to
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Application 12/194,752
Appellants, determining a user's position does not require determining a
user's bearing or angular relativity. App. Br. 10. Appellants argue that
determining a user's orientation, on the other hand, requires determining a
user's bearing or angular relativity because orientation refers to a location or
position relative to the points of the compass. Id. The Examiner responds
that Hofmann discloses determining the "actual position" of the user and the
next step in the dance routine is displayed according to the calculated "actual
position," which includes the direction the user is facing (the user's
"orientation"). Ans. 4-5 (citing Hofmann Fig. 2, 3:17-21, 4:50-60, 5:33-
41).
Appellants have not persuaded us the Examiner erred in finding
Hofmann discloses determining the user's orientation. As discussed above
in the Written Description analysis, a user's "orientation" is not limited to
the angular position of the user with respect to a reference position. Instead,
"orientation" may refer to the user's position with respect to a reference
position.
Moreover, as found by the Examiner, Hofmann discloses a dance
game that displays prompts to a user indicating the next steps the user should
take based on the user's actual position. See Ans. 4-5 (citing Hofmann Fig.
2, 3: 17-21, 4:50-60, 5:33--41). As seen in Hofmann's Figure 2, the system
incorporates the direction the user is facing in its determination of the next
steps the user should take. See Hofmann Fig. 2. Accordingly, a skilled
artisan would understand the "position" disclosed by Hofmann to include the
angular direction the user is facing, or the user's "orientation" under the
construction argued by Appellants.
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Appellants further argue Hofmann does not disclose determining the
user's orientation with respect to a "reference position" because Hofmann
discloses that the user's current/beginning location is used to determine the
user's next steps, not the user's location once the next steps are performed.
App. Br. 11-12.
Appellants have not persuaded us the Examiner erred in finding
Hofmann discloses determining a user's orientation "with respect to a
reference position of said surface." Hofmann discloses displaying the next
steps of a dance to a user positioned on the dance surface. See Ans. 4-5
(citing Hofmann Fig. 2, 3:17-21, 4:50-60, 5:33--41). The system is able to
track users with or without sensors. Hofmann 4:3-12. An ordinarily skilled
artisan would understand from Hofmann' s disclosure that in order to track
individual users with or without sensors, the system must keep track of each
individual user and their respective positions, both before instructions for a
next step and after. Accordingly, we are not persuaded the Examiner erred
in finding Hofmann discloses determining a user's orientation "with respect
to a reference position of said surface" (claim 1 ), because Hofmann
discloses keeping track of individual users throughout the performance of
the dance and the user's current position is used as a reference position in
determining their next position as they take an additional step.
Anticipation - Claims 7 and 10
Appellants argue the Examiner erred in rejecting claims 7 and 10 as
anticipated by Hofmann for the same reasons as claim 1. See App. Br. 12.
Accordingly, we sustain the rejections of claims 7 and 10 for the same
reasons as set forth above for claim 1.
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Anticipation - Claim 11
Claim 11 recites "[t]he method of Claim 1, wherein: said user
orientation is automatically determined at the beginning of a performance of
said specified activity." Appellants argue the Examiner erred in rejecting
claim 11 as anticipated by Hofmann for the same reasons as claim 1. See
App. Br. 13. Appellants further argue that in rejecting claim 1, the Examiner
relies on the beginning position of the user as the claimed "reference
position." App. Br. 14. Appellants argue claim 11 requires that the user's
position is determined at the beginning of the performance of the specified
activity and, therefore, there is no "reference position" with which to
determine the user's orientation because there is only one positional data
point at the beginning of the performance of the activity. App. Br. 14.
The Board "determines the scope of claims in patent applications not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (quoting Jn re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004). The Specification does not define the
"beginning of a performance of said specified activity." However, the
Specification discloses in Figure 3 that contacts 320a-c "occur at the
beginning of the performance, and contacts 320d-f occur at the end thereof."
Spec. ,-i 48. Contacts 320a-c are three contacts that each occur "at the
beginning of the performance," which indicates that the Specification uses
"beginning" broadly enough to encompass more than the first contact the
user makes with the surface. Accordingly, the broadest reasonable
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interpretation in light of the Specification of the claimed "beginning of a
performance of said specified activity" is not limited to the position of the
first contact made with a surface. Instead, "beginning of a performance"
may include more than one contact that occurs at the beginning of the
performance.
Applying this broadest reasonable interpretation, Appellants have not
persuaded us the Examiner erred in rejecting claim 11 as anticipated by
Hofmann because the "beginning of a performance" encompasses
determining the orientation for the second position of the user with respect
to the first position of the user (the "reference position").
Obviousness - Claims 2-5, 14, 15, 18, and 19
Claim 2 recites, "[t]he method of Claim 1, wherein said method
includes the step of: recording each of a succession of contacts that are
applied to said surface by said user, when said user is performing said
activity, wherein said contacts collectively comprise a record of said
performance." The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Hofmann and Kim. See Final Act. 14-20. Appellants
argue the Examiner erred in rejecting claim 2 because neither Hofmann nor
Kim teaches or suggests recording contacts that are applied to a surface. See
App. Br. 15-18. In particular, Appellants argue Kim teaches tracking
markers worn by a user to record the user's performance instead of tracking
user's contacts with a surface. App. Br. 16-17. Appellants further argue an
ordinarily skilled artisan would not be motivated to combine Kim and
Hofmann because combining Kim's visual feedback of the user's previous
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Application 12/194,752
steps with Hofmann's visual cues for the user's next steps would be
confusing to the user. App. Br. 17.
Appellants have not persuaded us the Examiner erred in rejecting
claim 2. As found by the Examiner, Hofmann teaches detecting user
contacts with a surface where the detected contacts would be temporarily
stored in memory to determine where to address the individual user and
where the user's next step should take place. Ans. 8 (citing Hofmann Fig.
2). Kim teaches recording motion data of a user performing an activity and
assigning a score to the user based on how closely the recorded data
corresponds to the original, guide data. Ans. 9 (citing Kim iii! 7, 53). In the
cited combination, Kim's recording features would be applied to Hofmann' s
detected contacts such that the contacts would be recorded to form a record
of the user's performance. Appellants' arguments directed to the individual
disclosures of Kim and Hofmann do not address this proposed combination
and are, therefore, unpersuasive because each reference cited by the
Examiner must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
We are also not persuaded by Appellants' argument that an ordinarily
skilled artisan would not have been motivated to combine Hofmann and Kim
because we agree with the Examiner's stated rationale that the combination
would give more effective feedback and training to the user. See Ans. 9.
Further, Appellants' argument that providing both cues for the next steps
and feedback regarding previous steps would be confusing is unpersuasive
because an ordinarily skilled artisan would have the creativity necessary to
vary the feedback to minimize any user confusion. See KSR Int 'l Co. v.
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Teleflex Inc., 550 U.S. 398, 418 (2007); see also id. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton.").
Obviousness - Claim 8
Appellants argue the Examiner erred in rejecting claim 8 for the same
reasons as claim 2, discussed above. See App. Br. 18. Accordingly, we
sustain the rejection of claim 8 under 35 U.S.C. § 103(a) for the same
reasons as set forth for claim 2.
Obviousness - Claims 9, 16, and 20
Claim 9 recites, "[t]he method of Claim 1, wherein: said configuring
step includes adjustment of real time directions provided to said user, in
response to one or more size related dimensions of said user, wherein said
size related dimensions are included in said specified user information."
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as unpatentable
over Hofmann and Kim. Appellants argue the Examiner erred in rejecting
claim 9 because Kim teaches supplying a player's height information to the
dance system, but does not teach adjusting real time directions provided to a
user. See App. Br. 18-21.
We disagree. As found by the Examiner, Kim teaches the user
providing height information to the display unit where the motion data and
character used to provide real time directions to the user are adjusted in
response to the height information provided by the user. Ans. 10 (citing
Kim ,-i,-i 33-37). In particular, Kim teaches adjusting the feet of the character
(which is sized according to the user's height information) to display them
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as attached to the ground in the instructions provided to the user. See Kim
ii 33.
Obviousness - Claim 6
Claim 6 recites:
The method of Claim 2, wherein: said interactive device stores
information pertaining to each of a plurality of users, and said
device is operable to identify a particular user using at least a
portion of said succession of contacts that are applied to said
surface by said user, and then accesses stored information of the
identified particular user.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as
unpatentable over Hofmann, Kim, Hoch, and Pryor. See Final Act. 20-22.
Appellants argue the Examiner erred in rejecting claim 6 for the same
reasons as claims 1 and 2. Accordingly, we are not persuaded by
Appellants' arguments for the same reasons as discussed above with respect
to claims 1 and 2.
Appellants further argue an ordinarily skilled artisan would not have
been motivated to combine Hoch' s anticipation of the user's next steps with
Hofmann because Hofmann already teaches providing instructions to the
user on the next steps to take. See App. Br. 21-22.
Appellants have not persuaded us the Examiner erred in rejecting
claim 9. As found by the Examiner, Hofmann does not anticipate the future
location of a user, instead providing an image to the user indicating where
the user should step next. Ans. 11 (citing Hofmann Fig. 2). Hoch, on the
other hand, predicts the movements of users to avoid potential collisions.
Ans. 11 (citing Hoch ii 7). We agree with the Examiner that these two
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functions are not mutually exclusive. See Ans. 11. We, therefore, are not
persuaded of error by Appellants' arguments.
Claims 21-23
Claim 21 recites, "[t]he method of Claim 1, wherein the orientation of
said user is an angular position of said user with respect to said reference
position of said surface." The Examiner rejected claim 21 under 35 U.S.C.
§ 103(a) as unpatentable over Hofmann and Dohta. Appellants argue Dohta
teaches determining the angular position of a game controller against a
reference point of the game controller, not the orientation of a user relative
to a reference position on a surface. See App. Br. 22-24.
Appellants have not persuaded us the Examiner erred in rejecting
claim 21. As found by the Examiner, Dohta teaches determining the
orientation of a game controller based on the angular position of the
controller with respect to a reference position of each controller. Ans. 12
(citing Dohta Figs. 11-14). As discussed above, Hofmann teaches
determining the orientation of a user with respect to a reference position of a
surface. See supra. Appellants' argument focuses on the disclosure of
Dohta while ignoring the disclosure of Hofmann. One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Merck & Co. Inc., 800 F .2d at
1097; see also In re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner
explained that the proposed combination is to apply Dohta' s determination
of an orientation using two controller's angular position with Hofmann's
determination of an orientation of a user with respect to a reference position
of a surface. See Ans. 12.
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Appellants further argue an ordinarily skilled artisan would not have
been motivated to combine Dohta and Hofmann because Hofmann "would
have no need or use of [the] two input devices" taught by Dohta. See App.
Br. 23-24. Appellants have not persuaded us the Examiner erred finding an
ordinarily skilled artisan would have been motivated to combine Dohta and
Hofmann. As found by the Examiner, an ordinarily skilled artisan would
have been motivated to add Dohta's controllers to Hofmann's system to
allow the combined system to determine the angular position of a user with
respect to a reference position. See id. Such combination would allow for
more precise orientation tracking than Hofmann alone.
CONCLUSIONS
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
representative claim 1, and grouped claims 12, 13, and 17, which fall with
claim 1. 2 Therefore, we sustain the rejections of claims 1, 12, 13, and 17
under 35 U.S.C. § 102(a) as anticipated by Hofmann.
Appellants argue the patentability of claims 7 and 10 based on the
same reasons presented for claim 1. See App. Br. 12-13. We, therefore,
sustain the rejections of claims 7 and 10 under 35 U.S.C. § 102(b) as
anticipated by Hofmann for the same reasons as set forth above.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 11. Therefore, we sustain the rejection of claim 11 under 35 U.S.C.
§ 102(a) as anticipated by Hofmann.
2 See 37 C.F.R. § 41.37(c)(l)(iv).
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On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
representative claim 2 and grouped claims 3-5, 14, 15, 18, and 19, which
fall with claim 2. Therefore, we sustain the rejections of claims 2-5, 14, 15,
18, and 19 under 35 U.S.C. § 103(a) as unpatentable over Hofmann and
Kim.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 8. Therefore, we sustain the rejection of claim 8 under 35 U.S.C.
§ 103(a) as unpatentable over Hofmann and Kim.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
representative claim 9, and grouped claims 16, and 20, which fall with claim
9. Therefore, we sustain the rejection of claims 9, 16, and 20 under
35 U.S.C. § 103(a) as unpatentable over Hofmann and Kim.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
claim 6. Therefore, we sustain the rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Hofmann, Kim, Hoch, and Pryor.
On the record before us and in view of the analysis above, we are not
persuaded by Appellants' contentions that the Examiner erred in rejecting
representative claim 21 under § 103, and grouped claims 22 and 23, which
fall with claim 21. Therefore, we sustain the rejection of claims 21-23
under 35 U.S.C. § 103(a) as unpatentable over Hofmann and Dohta.
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On the record before us, and for the reasons discussed above, we also
sustain the rejection of claims 21-23 under 35 U.S.C. § 112, first paragraph,
for failing to comply with the written description requirement.
DECISION
We affirm the Examiner's rejections of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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