Ex Parte ITODownload PDFPatent Trial and Appeal BoardJun 13, 201713158939 (P.T.A.B. Jun. 13, 2017) Copy Citation 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 2 Appeal 2016-008025 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 3 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). 4 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 5 Copy with citationCopy as parenthetical citation