Ex Parte Fateh

Patent Trial and Appeal Board

Mar 26, 2018

14014111 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/014,111 08/29/2013
88172 7590 03/28/2018
Mohr Intellectual Property Law Solutions, P.C.
522 SW 5th A venue
Suite 1390
Portland, OR 97204-2137
FIRST NAMED INVENTOR
SinaFateh
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.
Atheer.369 3010
EXAMINER
ZALALEE, SULTANA MARCIA
ART UNIT PAPER NUMBER
2614
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
joey@mohriplaw.com
docketing@mohriplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SINA F ATER
Appeal2017-010695
Application 14/014, 111
Technology Center 2600
Before LINZY T. McCARTNEY, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-21, 25, and 28. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.
Appeal2017-010695
Application 14/014, 111
BACKGROUND
The present patent application "relates to selectively presenting
content in a controlled fashion such as according to a visual map, in
response to contextual factors." Spec. i-f 2. Claim 1 illustrates the claimed
subject matter:
1. A machine implemented method, comprising:
obtaining input data;
generating output data from said input data;
determining a status of at least a first contextual factor;
determining whether said status of said first contextual
factor meets a first standard;
if said status of said first contextual factor meets said first
standard:
determining a disposition of an eye of a viewer with
respect to a see-through display;
applying a first transformation to said output data,
said first transformation comprising:
defining a first output region substantially
corresponding with a first portion of a retina of said
eye;
defining a second output region substantially
corresponding with a second portion of said retina
of said eye;
limiting output of said output data to said first
output region;
excluding output of said output data from
said second output region, such that said second
output region is unobstructed by said output data;
outputting said output data to said see-through display;
updating said determination of said disposition of said eye
subsequent to a change in disposition of said eye;
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maintaining said substantial correspondence between said
first output region and said first portion of said retina without
perceptibly changing said output data responsive to said change
in disposition of said eye; and
maintaining said substantial correspondence between said
second output region and said second portion of said retina.
App. Br. 10.
Appellant identifies Appeal No. 2017-004886 as related to this appeal.
See App. Br. 2. We entered a decision in the 004886 Appeal on August 25,
2017, rejecting the appealed claims as indefinite and reversing the
Examiner's written description and obviousness rejections. See Ex Parte
Fateh, Appeal 2017-004886, slip op. at 2-7 (PTAB Aug. 25, 2017).
Appellant subsequently amended the claims and the Office issued a Notice
of Allowance on January 31, 2018.
REJECTIONS
1-21,25,28 § 112
1-16, 18-21,25,28 § 103
17 § 103
NIA
Bar-Zeev, 1 Fateh, 2 and
Fleck3
Bar-Zeev, Fateh, Fleck,
Haddick4
1 Bar-Zeev et al. (US 2012/0154277 Al; June 21, 2012).
2 Fateh (US 2007/0057911 Al; March 15, 2007).
3 Fleck et al. (US 2013/0208014 Al; August 15, 2013).
4 Haddick et al. (US2011/0221656 Al; September 15, 2011).
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Application 14/014, 111
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
We reject claims 1-21, 25, and 28 under 35 U.S.C. § 112(b) as
indefinite. Claims must be "definite," that is, claims must "particularly
point[] out and distinctly claim[] the subject matter which the inventor ...
regards as the invention." 35 U.S.C. § 112(b). During prosecution, "[a]
claim is indefinite when it contains words or phrases whose meaning is
unclear." Manual of Patent Examining Procedure§ 2173.05(e). For
example, a claim is indefinite if the claim is "ambiguous, vague, incoherent,
opaque, or otherwise unclear in describing and defining the claimed
invention," In re Packard, 751F.3d1307, 1311 (Fed. Cir. 2014), or if it is
"is amenable to two or more plausible claim constructions," Ex Parte
Miyazaki, 89 USPQ.2d 1207, 1211(BPAI2008) (precedential).
Independent claim 1 recites in relevant part "maintaining said
substantial correspondence between said first output region and said first
portion of said retina without perceptibly changing said output data
responsive to said change in disposition of said eye." App. Br. 10 (emphasis
added). The term "perceptibly changing" is a term of a degree, that is, a
relative term of measurement. Generally, claims reciting a term of degree
are definite only when either the claims or their associated written
description provides a standard for measuring the relevant degree. See
Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826
(Fed. Cir. 1984) ("When a word of degree is used the district court must
determine whether the patent's specification provides some standard for
measuring that degree."). We see nothing in either the claims or Appellant's
written description that provides a standard for determining whether output
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data has been perceptibly changed. Appellant points to Figure 4 and claim
11 of United States Provisional Application No. 61/695,261 for written
description support for "without perceptibly changing said output data." See
App. Br. 4--7. But these disclosures do not mention the words "perceptibly
changing," much less provide a workable standard for determining their
scope.
For the reasons stated above, we conclude the term "perceptibly
changing" renders claim 1 indefinite. We also conclude dependent claims
2-21, 25, and 28 are indefinite because they depend from an indefinite
independent claim.
REJECTIONS UNDER 35 U.S.C. §§ 103(a), 112(a)
Because claims 1-21, 25, and 28 are indefinite for the reasons
discussed above, one cannot ascertain the metes and bounds of these claims.
We therefore summarily reverse the Examiner's rejections of claims 1-21,
25, and 28 under 35 U.S.C. §§ 103(a), 112(a) because these rejections are
necessarily based on speculation and assumptions. See In re Steele, 305
F.2d 859, 862 (CCPA 1962) ("[W]e do not think a rejection under 35 U.S.C.
§ 103 should be based on ... speculations and assumptions .... [I]t is
essential to know what the claims do in fact cover.").
It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect the adequacy of the written description or the prior art evidence
before us. The Examiner is free to enter new written description and prior
art rejections as may be appropriate once definite claims have been
presented.
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