Ex Parte ITO

Patent Trial and Appeal Board

Jun 13, 2017

13158939 (P.T.A.B. Jun. 13, 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.
13/158,939 06/13/2011 Yuichiro ITO AC-723-3103 1491
27562 7590 06/15/2017
NIXON & VANDERHYE, P.C.
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SULLIVAN, TYLER
ART UNIT PAPER NUMBER
2487
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUICHIRO ITO
Appeal 2016-008025
Application 13/158,939
Technology Center 2400
Before CAROLYN D. THOMAS, JEFFREY S. SMITH, and
TERRENCE W. McMILLIN, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appeal 2016-008025
Application 13/158,939
Appellant filed a Request for Rehearing (“Request”) on May 9, 2017,
of the Patent Trial and Appeal Board’s (“Board”) Decision, mailed March 9,
2017 (“Decision”) in which we affirmed the rejections of claims 1—17. We
reconsider our Decision in light of Appellant’s Request, and grant Appellant
an opportunity to address our claim interpretation by designating our
Decision as a new ground of rejection, but we otherwise maintain our
affirmance of the Examiner’s rejections. We highlight the following for
emphasis.
Appellant argues “a data value” encompasses both a single value (i.e.,
a data value) as well as multiple values (i.e., a single position and a single
orientation). Request 2. We agree with Appellant that the indefinite article
“a” carries the meaning of one or more. See Decision 5. However, when
used in this context, to encompass a single data value that indicates multiple
values for the disparate units of position and orientation, the meaning is
unclear. Appellant’s example of a transformation matrix as the single data
value is unpersuasive, because a matrix is, by definition, several rows and
columns of data values. A matrix is not a single data value. We agree with
Appellant (Request 2) that the phrase “transformation matrix indicative of a
single position and orientation” would satisfy the requirements of 35 U.S.C.
§112, second paragraph. However, the meaning of a single data value
indicative of both a single position and a single orientation is unclear. See In
re Packard, 751 F.3d 1307, 1322 (Fed. Cir. 2014).
Appellant contends that Appellant has not had an opportunity to
address our interpretation of claim 1. Request 2. We grant Appellant an
opportunity to address our claim interpretation when responding to the
Examiner’s rejections by designating our Decision as a new ground of
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Application 13/158,939
rejection pursuant to 37 C.F.R. § 41.50(b). We otherwise decline to change
our Decision and maintain our affirmance of the Examiner’s rejections.
Appellant contends that the Decision, Examiner’s Answer, and Final
Rejection have all failed to provide any motivation for why a person of
ordinary skill in the art would have combined the teachings of Matsui and
Anabuki. Request 3. The Supreme Court has held that:
[hjelpful insights, however, need not become rigid and
mandatory formulas; and when it is so applied, the TSM test is
incompatible with our precedents. The obviousness analysis
cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of
issued patents. The diversity of inventive pursuits and of modem
technology counsels against limiting the analysis in this way.
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Supreme
Court has also held that the “combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR Int’l Co., 550 U.S. at 416. Appellant has not
shown that calculating an index indicative of a single position and a single
orientation as taught by Anabuki, then using the index with the triangular
method of Anabuki, to calculate the position and orientation of the left and
right virtual cameras of Matsui, does anything more than yield the
predictable result of determining a position and orientation of multiple
cameras from a single position and orientation as taught by Anabuki.
Decision 6—7. Appellant has also not persuasively rebutted the Examiner’s
reason to combine the references. Id.
Appellant is confused by our finding that Anabuki teaches calculating
a single orientation in disclosing cameras having the same fixed orientation.
Request. 4. According to Appellant, this provides evidence that Anabuki
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Appeal 2016-008025
Application 13/158,939
does not “calculate” an average orientation of the two fixed cameras. Id.
However, because the cameras of Anabuki are both fixed in the same
orientation, “calculating” the orientation of the cameras is met by
determining the fixed orientation of the cameras as taught by Anabuki.
Appellant contends that combining the teachings of Matsui and
Anabuki would result in two different position/orientation calculations for
the left and right subjective view cameras of Matsui. Request 4—5.
Appellant’s contention is based on the premise that there is no need to
calculate data indicative of a single position and orientation in a virtual
space. Id. Appellant’s contention is inconsistent with the teachings of
Anabuki as discussed in our Decision.
We highlight Appellant has not provided persuasive evidence or
argument to show that calculating data indicative of a single position and a
single orientation was “uniquely challenging or difficult for one of ordinary
skill in the art” who can calculate the index indicative of a single position
and orientation as taught by Anabuki. See Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int7 Co., 550
U.S.at419).
DECISION
For the above reasons, we adhere to our decision to affirm the
Examiner’s rejections. Appellant’s Request for Rehearing is granted to the
extent that we designate our affirmance as a new ground of rejection
pursuant to 37 C.F.R. § 41.50(b).
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Appeal 2016-008025
Application 13/158,939
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (2011). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that 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.
GRANTED
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