Ex Parte Hsu

Patent Trial and Appeal Board

Sep 24, 2018

13945390 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/945,390 07/18/2013
100462 7590 09/26/2018
Dority & Manning P.A. and Google LLC
Post Office Box 1449
Greenville, SC 29602
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Stephen Charles Hsu
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.
GGL-249 8324
EXAMINER
RICHER, AARON M
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN CHARLES HSU1
Appeal 2018-003425
Application 13/945,390
Technology Center 2600
Before JOHNNY A. KUMAR, JUSTIN BUSCH, and JOHN D. HAMANN.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from the Final
Rejection of claims 1-3 and 5-20. We have jurisdiction over the appeal of
these claims pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies Google, Inc. as the real party in interest. Br. 2.
Appeal2018-003425
Application 13/945,390
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief ("Br.," filed August 21, 2017) and the
Examiner's Answer ("Ans.," mailed December 14, 2017). We have
considered in this decision only those arguments Appellant actually raised in
the Brief. Any other arguments which Appellant could have made but chose
not to make in the Brief are deemed to be waived. See 37 C.F.R.
§ 4I.37(c)(l)(vii).
STATEMENT OF CASE
An understanding of the invention can be derived from a reading of
illustrative claim 1, which is reproduced below:
1. A computer-implemented method of performing a two-
dimensional image processing operation on a texture atlas
mapped to a surface of a three-dimensional model, the method
compnsmg:
accessing, with a computing device, the texture atlas, the
texture atlas comprising a first pixel mapped to a first point on a
surface of the three-dimensional model;
defining, with the computing device, a manifold
neighborhood for the first pixel, the manifold neighborhood
comprising a set of second pixels associated with the texture
atlas, each second pixel in the set of second pixels respectively
corresponding to a second point on the surface of the three-
dimensional model located within a threshold distance of the
first point on the surface of the three-dimensional model in a
three-dimensional space defined by the three dimensional
model; and
performing, with the computing device a two-
dimensional image processing operation on the texture atlas in a
two-dimensional texture atlas space based at least in part on the
manifold neighborhood defined for the first pixel;
wherein defining the manifold neighborhood for the first
pixel comprises identifying a set of second points on the surface
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of the three-dimensional model located within a threshold
distance of the first point on the surface of the three-
dimensional model in the three dimensional space, identifying
the set of second pixels in the texture atlas in the two-
dimensional texture atlas space corresponding to the set of
second points on the surface of the three dimensional model in
the three-dimensional space, and defining the manifold
neighborhood as the set of second pixels in the texture atlas.
REJECTIONS
Claims 1-3, 5-9, 11, 12, and 14--20 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Lefebvre (US 2008/0001962 Al, published
Jan. 3, 2008) in view of Schmidt (US 2014/0253548 Al, published Sept. 11,
2014).
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Lefebvre in view of Schmidt and in further view of Lo (US 2014/0270537
Al, published Sept. 18, 2014).
Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over
Lefebvre in view of Schmidt and in further view of Pack (US 2010/0204964
Al, published Aug. 12, 2010).
ISSUE AND ANALYSIS 2
Based on Appellant's argument, the principal and dispositive issue is
whether the Examiner erred in combining Lefebvre and Schmidt to teach or
2 Separate patentability is not argued for rejections of claims 2-3, 5-8, 10-
13, 15-17, 19, and 20. Except for our ultimate decision, these claims are not
discussed further herein.
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suggest all the limitations of independent claims 1, 14, and 18 because the
references are not properly combinable. Br. 8-11. In particular, Appellant
contends that the Examiner erred in rejecting the claims as obvious over at
least Lefebvre and Schmidt because the proposed combination of Lefebvre
and Schmidt would frustrate the intended purpose of Lefebvre, Lefebvre
teaches away from the claimed invention, and the proposed combination is
based on impermissible hindsight. Id.
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. Further, we have reviewed the
Examiner's response to the contentions of claim 1 argued by the Appellant.
Br. 6-10.
We disagree with Appellant's conclusions. We adopt as our own
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner in
the Examiner's Answer in response to Appellant's Appeal Brief. Ans. 9-16.
We concur with the conclusions reached by the Examiner. We highlight and
address specific findings and arguments for emphasis as follows.
At the outset, we find Appellant is arguing the references separately. 3
The Examiner finds that Lefebvre teaches all elements of claim 1 except for
the claim limitation "three-dimensional space defined by the three-
dimensional model," for which the Examiner relies upon Schmidt. Final
Act. 2-6; Ans. 10-13.
3 One cannot show nonobviousness by attacking references individually
where the rejections are based on combinations of references. In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Application 13/945,390
In particular, the Examiner properly identifies the relevant teachings
in Lefebvre and Schmidt and states how each claimed element is met by
those teachings. Id.
Appellant contends the proposed combination of Lefebvre and
Schmidt would frustrate the intended purpose of Lefebvre because Lefebvre
teaches away from the claimed subject matter. Br. 8-10.
Appellant has presented several arguments as to why the combination
of the references does not teach or suggest the features recited in
independent claim 1. Id. In particular, Appellant contends "a primary
purpose of Lefebvre is to define a neighborhood by looking to 'immediate
neighbors' in the pixel space," whereas "the presently claimed subject matter
contemplates non-local locations for inclusion in the manifold
neighborhood." Br. 9-10.
The Examiner has provided a comprehensive response to each
argument presented by the Appellant on pages 11 through 16 of the Answer.
We have reviewed this response and concur with the Examiner's findings
and conclusions.
For example, the Examiner finds,
[T]here is nothing in Lefebvre that states a "primary purpose"
of the invention is to look to immediate neighbors in the pixel space.
A primary purpose of Lefebvre is indeed to define a neighborhood for
a pixel, but there is no discrediting of a solution that uses a 3D model
space (such as that in Schmidt) instead of a pixel space. The fact that
Lefebvre uses pixel space to define threshold distance rather than 3D
model space does not preclude the modification of Lefebvre to use 3D
model space instead. Because the Lefebvre reference does not
criticize, discredit, or otherwise discourage a 3D model space
threshold distance solution, the reference would not be seen as
teaching away from such a claim limitation ( see MPEP 2145).
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Appellant argues that the presently claimed subject matter
contemplates nonlocal locations for inclusion in the manifold
neighborhood and thus, one of ordinary skill in the art would be lead
away from the presently claimed subject matter by the teachings of
Lefebvre.
Further, the claimed subject matter does not include anything about
"non-local locations" for inclusion in the manifold neighborhood.
Ans. 13-14.
We agree with the Examiner's findings because all of the features of
the structure in the secondary reference need not be bodily incorporated into
the primary reference, but consideration should be given to what the
combined teachings, knowledge of one of ordinary skill in the art, and the
nature of the problem to be solved as a whole would have suggested to those
of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA
1981 ).
In that regard, the Supreme Court has indicated that:
[It is error to] assum[ e] that a person of ordinary skill
attempting to solve a problem will be led only to those elements
of prior art designed to solve the same problem. . . . Common
sense teaches ... that familiar items may have obvious uses
beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007) (citation omitted).
Furthermore, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F .2d
881, 889 (Fed. Cir. 1984). As such, Lefebvre would have been adjusted to
accommodate teachings from Schmidt by one of ordinary skill in the art. In
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particular, the combination as a whole would have taught one of ordinary
skill in the art "to avoid unrealistic looking discontinuous patterns." (See
Final Act. 5-6).
Also, "[a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant." Ricoh Co., Ltd. v.
Quanta Computer Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (citations and
internal quotation marks omitted). Teaching an alternative or equivalent
method, however, does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433,438 (CCPA 1965). A reference does not
teach away if it merely expresses a general preference for an alternative
invention from amongst options available to the ordinarily skilled artisan,
and the reference does not discredit or discourage investigation into the
invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Regarding Appellant's hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court
guides that "[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning." KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, "[ r ]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it." Id.
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In reviewing the record here, we find Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of invention. See In re McLaughlin, 443
F.2d 1392, 1395 (CCPA 1971).
Moreover, Appellant has not provided persuasive evidence that
combining the respective teachings of the references ( as proffered by the
Examiner - Final Act. 2-6) would have been "uniquely challenging or
difficult for one of ordinary skill in the art," or that such a combination
would have "represented an unobvious step over the prior art." Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007).
Nor has the Appellant provided any objective evidence of secondary
considerations, which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Regarding claim 9, while Appellant raises additional arguments for
patentability of the cited claims (Br. 20-33), we find that the Examiner has
responded in the Answer with sufficient evidence. Ans. 17. Therefore, we
adopt the Examiner's findings and underlying reasoning, which are
incorporated herein by reference. Consequently, we find no error in the
Examiner's rejection of claim 9.
As noted above, Appellant presents no arguments for claims 4---6, 13,
and 15-18 and their corresponding rejections. We refer to the above
discussion and further adopt the Examiner's findings and conclusion
concerning the rejections of these claims.
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DECISION
The Examiner's decision rejecting claims 1-3 and 5-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(l )(iv).
AFFIRMED
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