Ex Parte Eckhoff et al

Patent Trial and Appeal Board

Feb 10, 2017

12655194 (P.T.A.B. Feb. 10, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/655,194 12/23/2009 Philip Eckhoff 1108-009-002A-000000
1016
5209
138951 7590 02/14/2017
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
MA, CALVIN
ART UNIT PAPER NUMBER
2693
NOTIFICATION DATE DELIVERY MODE
02/14/2017 ELECTRONIC
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP ECKHOFF, WILLIAM GATES,
PETER L. HAGELSTEIN, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, ROBERT LANGER,
ERIC C. LEUTHARDT, EREZ LIEBERMAN, NATHAN P. MYHRVOID,
MICHAEL SCHNALL-LEVIN, CLARENCE T. TEGREENE, and
LOWELL L. WOOD JR.
Appeal 2015-004913
Application 12/655,194
Technology Center 2600
Before JEAN R. HOMERE, DEBRA K. STEPHENS, and
JEFFREY S. SMITH, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed December 19, 2016, Appellants request a rehearing
under 37 C.F.R. § 41.52 from the Decision on Appeal (“Decision”) of the
Patent Trial and Appeal Board (“Board”), dated November 2, 2016. In the
Decision, we affirmed the Examiner’s rejection of claims 1, 6, 8, 10, 17, 22,
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Application 12/655,194
26,34,41,50-52,97, 102, 104, 106, 111, 112, 117-124, 126, 127, 130, 131,
135, 137, 139, 140, 142, 146, 147, 168, 169, 172, 173, and 181. Dec. 8.
ANALYSIS
In the Request for Rehearing (“Req. Reh’g”), Appellants allege the
Board erred by overlooking the arguments presented in the Reply Brief with
regards to claims 34, 41, 50, 51, 111, 112, and 121. Req. Reh’g 4.
According to Appellants, “[bjecause the Reply Brief was filed after the
Answer, the Examiner could not have rebutted the arguments set forth in the
Reply Brief.” Id. Consequently, Appellants submit these arguments remain
unaddressed by the Examiner or the Board Opinion, which merely adopted
the Examiner’s findings and conclusions with regards to the cited claims
without providing any detailed reasoning. Id.
The arguments are not persuasive. As noted in the original Decision,
the Examiner rebutted in the Answer by a preponderance of the evidence,
each argument separately raised by Appellants in the Appeal Brief. Dec. 8.
Therefore, any new arguments that Appellants may have provided in the
Reply Brief are not timely, and are thereby waived. More specifically,
Appellants did not explain why, nor was it apparent that the arguments were
necessitated by a new point in the Answer or any other circumstance
constituting “good cause” for its belated presentation. See 37 C.F.R.
§ 41.41(b)(2) (2016). Nonetheless, in the interest of fostering compact
prosecution, we have amended the original Decision as follows:
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Application 12/655,194
Claim 34
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of a user cropping an image to exclude an individual therefrom
teaches or suggests “cease providing the display to the individual based on
an identified characteristic of a second individual,” as required by the claim.
Req. Reh’g 5—6; Reply Br. 10-11 (quoting Ans. 6—7). This argument is not
persuasive. Goldberg discloses an interface for allowing a user to modify
the image of a person that has been identified through facial recognition.
Fig. 31; Final Act. 7. In particular, upon the person being identified in a
displayed image, the user is given the option of cropping any part of the
identified person or sending the image to the identified person. Goldberg
37:3—23; Final Act. 7. That is, the disclosed interface provides the display
of an image to the user (i.e., a first individual). Then, upon the user
cropping an identified individual (a second individual) in the displayed
image, the initial image has been modified based on the characteristic of the
second individual. Consequently, because the initial image is modified, the
display thereof is ceased from being provided to the first individual based on
the identified characteristic of the second individual. Accordingly, we find
no error in our initial decision to sustain the Examiner’s rejection of claim
34.
Claim 41
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
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Application 12/655,194
disclosure of a videotape recorder that documents a patron teaches or
suggests “documenting the provision of the content of the display for the
individual,” as required by the claim. Req. Reh’g 6—7; Reply Br. 12—13
(quoting Ans. 7). This argument is not persuasive. As correctly noted by
the Examiner, Goldberg discloses using a recorder for storing displayed
contents (e.g., screenshots) for a patron/user of a theme park. Ans. 7,
Goldberg 37:17—33, Fig. 2. We do not agree with Appellants that the cited
disclosure merely teaches documenting the patron on a ride. Req. Reh’g. 7.
The cited disclosure also teaches documenting screenshots including the
patron and any other content displayed on the screen at the time the picture
is captured (documenting the provision of the content of the display) so that
the picture can be subsequently made available to the patron for purchase
(for the individual). Goldberg 37:17—33, 39-42. Accordingly, we find no
error in our initial decision to sustain the Examiner’s rejection of claim 41.
Claim 50
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of accepting a credit card as a payment teaches or suggests “a
payment/charge associated with the individual is a basis of content displayed
to an individual, as required by the claim.” Req. Reh’g 7—8; Reply Br. 12—
13 (quoting Ans. 8). In particular, Appellants argue that the Examiner failed
to show that the alleged payment characteristic disclosed in Goldberg is
determinative of the content of the display. Req. Reh’g 8. This argument is
not persuasive. Goldberg discloses an interface for allowing a user to
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purchase a screenshot displaying a patron on a ride. Goldberg Fig. 2; Final
Act. 18—19; Ans. 7—8. In particular, upon the patron’s credit card being
identified, the screenshot associated therewith is an image displayed to the
patron for subsequent purchase. Goldberg 15:1—25, 21:10-25, 49-51; Final
Act. 18—19; Ans. 7—8. We, therefore, agree with the Examiner that the
identified credit card serves as a basis for displaying to the user/patron a
screenshot associated therewith. Ans. 8. Accordingly, we find no error in
our initial decision to sustain the Examiner’s rejection of claim 50.
Claim 51
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of accessing an image or classifying a data stream teaches or
suggests “selecting the individual based a location of the individual”, as
required by the claim. Req. Reh’g 8—9; Reply Br. 13—14 (quoting Ans. 8).
Further, Appellants argue that the combination of Sharma and Goldberg
does not teach or suggest the disputed limitations. Id. Although Appellants
persuasively argue that the portion of Goldberg relied upon by the Examiner
does not teach or suggest the disputed limitations, we do not agree with the
proposed combination of Sharma and Goldberg is similarly deficient. As
noted in the initial Decision, Sharma’s disclosure of a DBR performing a
face analysis when the individual comes within view of a camera teaches
selecting the individual based on the orientation thereof. Dec. 4. Likewise,
because the individual is located in a retail store, such selection of the
individual is also based upon the individual’s location within the store.
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Sharma Abstr. Accordingly, claim 51 is unpatentable over the combination
of Sharma and Goldberg.
Claim 111
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of selecting content to be printed on attire teaches or suggests
“means for selecting the content for the individual at least based on an attire
of the individual,” as required by the claim. Req. Reh’g 10-11; Reply Br.
20—21 (quoting Ans. 12—13). This argument is not persuasive. Goldberg
discloses using a fabric printer for rendering selected image content on a
physical medium (T-shirt, or cap) for the benefit of a theme park patron.
Goldberg 37:56—60; Ans. 12—13. It would have been obvious to one of
ordinary skill in the art that a theme park vendor would print a captured
image or a modified version thereof on a T-shirt or a cap for subsequent sale
to the patron based on similar attire (e.g., T-Shirt or cap) being worn by the
patron while at the theme park. The ordinarily skilled artisan in marketing
would appreciate that selecting content suitable to be printed on a similar
attire being worn by the patron would be an effective sale pitch to the patron.
Consequently, claim 111 is not patentable over the combination of Sharma
and Goldberg.
Claim 112
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of a user cropping an image to exclude an individual therefrom
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teaches or suggests “cease providing the display to the individual based on
an identified attire of the individual,” as required by the claim. Req. Reh’g
11—12; Reply Br. 22—23 (citing Ans. 13—14). This argument is not
persuasive. As discussed above with respect to claim 34, Goldberg teaches
or suggests ceasing the display to a first individual based on the identified
characteristic of the second individual. Further, as correctly noted by the
Examiner, Goldberg discloses that the attire of an individual may be used as
a basis or identifying the individual in a picture, as well as for excluding the
individual therefrom. Ans. 13—14 (citing Goldberg col. 19:18—50).
Therefore, we agree with the Examiner that Goldberg teaches or suggests
ceasing a display to an individual based on the attire of another individual in
an image. Id. Accordingly, we find no error in our initial decision to sustain
the Examiner’s rejection of claim 112.
Claim 121
Appellants argue that the Board Opinion did not demonstrate any
evidence or reasoning set forth by the Examiner to show how Goldberg’s
disclosure of displaying a selectable icon teaches or suggests “means for
providing a display having directions to a location for the individual”, as
required by the claim. Req. Reh’g 12—13; Reply Br. 23—24 (citing Ans. 14).
This argument is not persuasive. As correctly noted by the Examiner,
Goldberg discloses an interface containing a button to facilitate a user to
email an image to an individual identified therein. Ans. 14 (citing Goldberg
37:18—21). We agree with the Examiner that the mechanism by which the
disclosed interface allows the user to get in touch with an individual via e-
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mail teaches or suggests directions displayed on the interface to locate or
reach the individual albeit via electronic correspondence. Ans. 14.
Accordingly, we find no error in our initial decision to sustain the
Examiner’s rejection of claim 121.
CONCLUSION
In view of the foregoing discussion, we grant Appellants’ Request for
Rehearing. We have modified the Decision by expanding upon our original
analysis, and by supplementing the rationales provided by the Examiner in
the Answer. Consequently, this Decision on Request for Rehearing has
substantially modified the original Decision as to become a new Decision.
Pursuant to 37 C.F.R. §§ 41.50(b) and 41.52(a)(1), we treat this new
Decision as containing a new ground of rejection.
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
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REQUEST FOR REHEARING-GRANTED
37 C.F.R. $ 41.50(b)
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