Ex Parte Francisco

Patent Trial and Appeal Board

Feb 27, 2017

12755382 (P.T.A.B. Feb. 27, 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
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/755,382 04/06/2010 MARK DAVID FRANCISCO 007412.01164 8495
71867 7590 03/01/2017
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 007412
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
BECK, LERON
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
03/01/2017 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):
PTO-71867 @bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK DAVID FRANCISCO
Appeal 2015-002941
Application 12/755,382
Technology Center 2400
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
MELISSA A. HAAPALA, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1—4, 6—10, 21—24, and 26—32. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2015-002941
Application 12/755,382
STATEMENT OF THE CASE
The present patent application concerns “transmission and receipt of
3-dimenstional (3D) video content and to Internet protocol (IP) streaming of
3D video content to a user device.” Spec. 11. Claim 1 illustrates the
claimed subject matter:
1. A method comprising:
receiving 3D content from a first data stream;
receiving supplemental content from a second data stream
different from the first data stream;
presenting, by a display device, the 3D content and the
supplemental content, wherein the supplemental content is at a
first depth relative to and within the 3D content;
receiving a request to adjust a depth of the supplemental
content relative to the 3D content;
adjusting the supplemental content to a second depth
relative to and within the 3D content based upon request; and
presenting, by the display device, the adjusted
supplemental content at the second depth within the 3D content.
REJECTIONS
Claims 1, 8, 21, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali et al. (US 2011/0211049 Al; Sept. 1, 2011),
Dolgoff (US 6,392,689 Bl; May 21, 2002), and Tomsen et al. (US
2002/0083464 Al; June 27, 2002).
Claims 2, 3, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali, Dolgoff, Matsuda (US 2009/0289951 Al; Nov.
26, 2009).
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Application 12/755,382
Claims 4 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali, Dolgoff, and Park et al. (US 7,394,977 B2; July
1,2008).
Claims 6 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali, Dolgoff, and Taima et al. (US 6,747,610 Bl; June
8, 2004).
Claims 7 and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali, Dolgoff, and Scwegler, Jr et al. (US
2003/0052877 Al; Mar. 20, 2003).
Claims 9, 10, and 29 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bassali, Dolgoff, and Kida (US 2002/0070981 Al; June
13,2002).
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bassali, Dolgoff, and Harris et al. (US 4,809,065; Feb. 28, 1989).
Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bassali, Dolgoff, Itoh (US 2010/0134603 Al; June 3, 2010).
Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bassali, Dolgoff, Idesawa et al. (US 2006/0268008 Al; Nov. 30, 2006).
ANALYSIS
Claim 1
Appellant contends Bassali does not teach or suggest displaying both
3D content and supplemental content as required by claim 1. See App. Br.
5. According to Appellant, the Examiner found Bassali’s “separate images
for a viewer’s left eye and right eyes read on the claimed supplemental
content, whereas the originally received [3D] stream . . . reads on the 3D
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content.” Id. Appellant argues Bassali’s “left and right images ... are what
comprise, together, the ... 3D content so those components cannot be said
to be ‘supplemental’ to that 3D content.... Alternatively, if the left and
right images are the supplemental content, they cannot also be the 3D
content. They cannot be both.” Id.
The Examiner found, among other things, that Bassali’s 3D video
content stream teaches the recited “3D content” and Bassali’s graphics such
as program guides, closed captioning, and text teach the recited
“supplemental content.” See Final Act. 5 (citing Bassali Tflf 15, 22, 34, 39).
Appellant does not specifically address the latter finding. See App. Br. 5;
Reply Br. 1—2. The Examiner found Bassali teaches displaying both types
of content, and the cited portions of Bassali provide adequate support for this
finding. For example, Bassali discloses processing “graphics (e.g., program
guides, closed captioning, text, etc.) to be displayed by display device 108
and configuring] the data such that the graphics render properly in 3D on
display device 108.” Bassali 134 (emphases omitted). Bassali also
discloses “directing] the display device to generate and display the 3D
video content in accordance with the 3D video content stream.” Id. 115;
Final Act. 5 (Bassali 115). Accordingly, we find Appellant’s arguments
unpersuasive.
Appellant next contends neither Bassali nor Dolgoff teach or suggest
“receiving a request to adjust a depth of the supplemental content relative to
the 3D content” and “adjusting the supplemental content to a second depth
relative to and within the 3D content based on the request” as recited by
claim 1. See App. Br. 6—7. Appellant argues “Bassali. . . never adjusts the
supplemental content to a second depth” and “Dolgoff also does not present
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both 3D content and supplemental content, much less present them at
different depths relative to and within each other, as claimed.” Id. at 6.
Appellant further contends “[njeither system presents 3D content at the same
time as supplemental content where the supplemental content is received
from a second data stream different from the first data stream, as claimed.”
Id. at 6—7.
The Examiner found Dolgoff teaches or suggests the disputed
“receiving” and “adjusting” limitations. See Final Act. 6 (citing Dolgoff
4:7—26). The cited portions of Dolgoff disclose a method that allows users
to display selected image elements in three dimensions and alter the depth of
the selected image elements. See Dolgoff 4:7—26. Specifically, Dolgoff
discloses “a method of producing three-dimensional image information for
subsequent viewing on a display in 3-D.” Id. at 4:8—17. The method
involves “a user labeling] selected elements within a frame of image
elements . . . [and] software . . . producing] a duplicate image of each
labeled image item spaced at a distance from the original item determined by
the depth in three dimensions at which the selected image item is to appear.”
Dolgoff 4:9-17. Dolgoff further discloses “said user can instruct said
computer to change the depth at which an image item appears . . . [and] the
software will alter the distance between the original item and its duplicate so
that... the viewer will see the image item changing depth as desired.” Id. at
4:18—22. The Examiner found the three-dimensional image item with
changed depth teaches the recited “supplemental content,” making the three-
dimensional image items with unchanged depths the recited “3D content.”
See Final Act. 6.
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Application 12/755,382
Appellant’s conclusory assertions concerning Dolgoff have not
persuaded us the Examiner erred. Appellant has not adequately explained
why Dolgoff s depth-adjusted three-dimensional item is not “supplemental
content,”1 nor has Appellant sufficiently explained why adjusting the depth
of a three-dimensional image item among other three-dimensional image
items does not teach or suggest “adjusting the supplemental content to a
second depth relative to and within the 3D content.” Simply stating Dolgoff
fails to teach these limitations does not make it so. Cf. In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). As for
Appellant’s contention that neither Dolgoff nor Bassali teaches or suggests
“receiving supplemental content from a second data stream different from
the first data stream,” the Examiner relied on Tomsen for this limitation, not
Dolgoff or Bassali. See Final Act. 6—7.
Finally, Appellant argues one of skill in the art would not combine
Tomsen with Bassali or Dolgoff because “Tomsen is not related in any
meaningful respect to 3D television.” App. Br. 7. Appellant also asserts the
Examiner failed to provide “a well-articulated reason to combine the
references, as required by KSR” to combine Tomsen with Bassali and
Dolgoff. Id. Moreover, Appellant asserts “even if combined, the contextual
information from Tomsen would be adjusted along with the 3D content of
Bassali and/or Dolgoff.” Id. According to Appellant, “[tjhere is still no
1 We note the term “supplemental content” does not appear in the written
description.
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reason to believe that the depth of the contextual info of Tomsen would be
adjusted relative to the depth of the 3D content, as claimed.” Id.
To the extent Appellant contends Tomsen is non-analogous art, we
disagree. Prior art is analogous if the art “is from the same field of
endeavor, regardless of the problem addressed” or “reasonably pertinent to
the particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004). Here, although aspects of Appellant’s
invention may concern 3D television, see Spec. H 1—3, neither the relevant
field of endeavor nor the problem faced by Appellant is limited to this aspect
of the invention. See Unwired Planet, LLC v. Google Inc., 841 F.3d 995,
1001 (Fed. Cir. 2016) (“The field of endeavor of a patent is not limited to the
specific point of novelty, the narrowest possible conception of the field, or
the particular focus within a given field.”); In re GPACInc., 57 F.3d 1573,
1578 (Fed. Cir. 1995) (“A reference is reasonably pertinent if, even though it
may be in a different field of endeavor, it is one which, because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem.”). Appellant’s invention also concerns
the field and problem of displaying additional content (e.g., “in-band” and
“out-of-band” content) with video, specifically a 3D video stream. See id.
1133—45, Figs. 4A-5C.
Tomsen similarly concerns displaying “supplemental content” related
to a television broadcast, the “[supplemental content. . . including], for
example, additional information about a television broadcast, images,
streaming video, e-commerce opportunities, and the like.” Tomsen H 10-
23. Thus, both Tomsen and Appellant’s invention are in the same field of
endeavor and deal with the same problem: displaying additional content with
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video. Accordingly, the Examiner properly considered Tomsen’s teaching
when determining whether the claimed invention would have been obvious
to one of ordinary skill in the art. See Bigio, 381 F.3d at 1325.
With respect to the Examiner’s motivation to combine Tomsen with
Bassali and Dolgoff, the Examiner cited paragraph 13 of Tomsen in support
of the Examiner’s finding that one of skill in the art would have been
motivated to combine the cited art in the claimed manner. See Final Act. 7.
This paragraph indicates that Tomsen’s invention solves several prior art
problems, including providing “unprompted, context-sensitive querying for
supplemental content during a television broadcast” and “a technique for
providing supplemental content related to a television broadcast that does
not require a broadcaster or cable operator to embed specific triggers into the
broadcast medium.” Tomsen 113. Appellant has not persuasively
addressed this portion of Tomsen. Given Appellant’s failure to address the
cited portion of Tomsen, Appellant has not persuaded us the Examiner
erroneously found this disclosure would have provided adequate reason to
combine the references in the claimed manner.
As for Appellant’s assertion that “even if combined, the contextual
information from Tomsen would be adjusted along with the 3D content of
Bassali and/or Dolgoff,” Appellant has not provided any persuasive
evidence or reasoning to support this assertion. The Examiner found
Dolgoff teaches adjusting supplemental content relative to 3D content and
the combination of Bassali, Dolgoff, and Tomsen would result in the
claimed invention. See Final Act. 4—7. Appellant’s conclusory argument
has not persuaded us the Examiner erred.
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For the above reasons, we sustain the Examiner’s rejection of claim 1.
Because Appellant has not presented separate, persuasive patentability
arguments for claims 8, 21, and 28, we also sustain the Examiner’s
rejections of these claims.
Claims 2-A, 6, 7, 9, 10, 22-24, 26, 27, and 29-32
The Examiner rejected independent claims 1 and 21 over a
combination of Bassali, Dolgoff, and Tomsen, finding Tomsen teaches or
suggests receiving supplemental and 3D content from different streams as
required by claims 1 and 21. See Final Act. 4—7. The Examiner rejected
most of the claims that depend from claims 1 and 21 (specifically, claims 2—
4, 6,1,9, 10 and 22—24, 26, 27, 29, respectively) over different
combinations of prior art that do not include Tomsen. See id. at 7—11.
Appellant contends the Examiner did not find any of the references cited in
the rejections of claims 2—4, 6, 7, 9, 10, 22—24, 26, 27 and 29 teach or
suggest receiving supplemental and 3D content from different streams as
required by these claims by virtue of dependency. See App. Br. 8—11.
Appellant asserts the Examiner’s rejection of independent claim 30 suffers
from a similar flaw, as well as the Examiner’s rejections of dependent claims
31 and 32. See id. at 12. Appellant argues we should therefore reverse the
Examiner’s rejections of claims 2—4, 6, 7, 9, 10, 22—24, 26, 27 and 29—32.
We find Appellant’s arguments persuasive. Appellant raised this
argument in their Appeal Brief, yet the Examiner’s Answer does not explain
how the Examiner’s rejections account for the disputed limitation or revise
the rejections to address this issue. See Ans. 4—19. Accordingly, based on
the record before us, we reverse the Examiner’s rejections of claims 2—4, 6,
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7, 9, 10, 22—24, and 26—32. Should prosecution continue, the Examiner may
wish to consider whether it would have been obvious to combine the
teachings of Tomsen, or any other prior art reference, with the prior art cited
in the rejections of claims 2-4, 6, 7, 9, 10, 22—24, 26, 27, and 29—32 to
arrive at the claimed inventions.2
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1, 8, 21, and 28. We reverse the Examiner’s rejections of claims 2—7, 9, 10,
22-27 and 29-32.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
2 The Examiner’s rejections of the dependent claims raise other issues the
Examiner may wish to address if prosecution continues. For example, the
Examiner found Matsuda’s 3D look-up table contains “3D content” and
relied on this finding to reject claim 2. See Final Act. 7; Ans. 16. Matsuda’s
look-up table contains color values. See, e.g., Matsuda 1119 (explaining a
color conversion section “converts colors for conversion (stored in the 3D-
LUT storage section 403)” (emphasis omitted)). It is unclear why color
values teach or suggest “3D content.” Should prosecution continue, the
Examiner may explain wish to why color values teach or suggest “3D
content” under the Examiner’s construction of the term.
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