Ex Parte Kumar et al

Patent Trial and Appeal Board

Aug 8, 2016

12606581 (P.T.A.B. Aug. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/606,581 10/27/2009
14824 7590 08/10/2016
Moser Taboada/ SRI International
1030 Broad Street
Suite 203
Shrewsbury, NJ 07702
FIRST NAMED INVENTOR
Rakesh Kumar
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.
SRI15621 3016
EXAMINER
CHU,DAVIDH
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
08/10/2016 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):
docketing@mtiplaw.com
llinardakis@mtiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAKE SH KUMAR, TARGA Y OSKIPER,
OLEG NARODITSKY, SUPUN SAMARASEKERA, ZHIWEI ZHU, and
JANET KIM
Appeal2015-004700
Application 12/606,581
Technology Center 2600
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1-9, 11-25, and 27-33. We have jurisdiction under 35 U.S.C.
§ 6(b). Claims 10 and 26 are canceled. App. Br. 21, 25.
We affirm-in-part and institute new grounds of rejection within the
provisions of 37 C.F.R. § 41.50(b) (2014).
1 According to Appellants, the real party in interest is SRI International.
App. Br. 3.
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Application 12/606,581
STATEMENT OF THE CASE
The Claims
Claims 1, 16, 17, and 32 of Appellants' invention are independent.
Claim 1 is illustrative of the subject matter on appeal:
1. A method of rendering a synthetic object onto a
user-worn display showing the user's view of a real world scene,
the method comprising the steps of:
capturing real world scene information using one or more
user-worn sensors;
producing a first pose estimation data set and a first depth
data set based on at least a portion of the captured real world
scene information;
receiving the synthetic object generated in accordance
with the first pose estimation data set and the first depth data set;
rendering the synthetic object onto the user-worn display
in accordance with the first pose estimation data set and the first
depth data set, thereby integrating the synthetic object into the
user's view of the real world scene;
producing a second pose estimation data set and second
depth data set for a user-controlled device; and
determining, based at least in part on the first pose
estimation data and the second pose estimation data set, whether
a user-controlled device has interacted with the synthetic object
and causing the synthetic object to react to the interaction based
at least in part on the first pose estimation data and the second
pose estimation data set.
App. Br. 20.
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Application 12/606,581
The Examiners Rejections
Claims 1-3 and 17 stand rejected under 35 U.S.C. § 102(e)2 as
anticipated by Sauer et al. (US 7,774,044 B2; issued Aug. 10, 2010)
("Sauer"). See Final Act. 3-5.
Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer and Steve Hsu et al., Automatic registration and
visualization of occluded targets using ladar data, 5086 Proc. SPIE Laser
Radar Technology and Applications VIII 1-13 (2003) ("Hsu"). See Final
Act. 5.
Claims 5-9 and 21-25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer and Scott et al. (US 2010/0045701 Al; published
Feb. 25, 2010) ("Scott"). See Final Act. 5-7.
Claims 11, 14, 27, and 30 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer, Kumar et al. (US 2006/0073449 Al; published
Apr. 6, 2006) ("Kumar"), and Naimark et al. (US 2004/0028258 Al;
published Feb. 12, 2004) ("Naimark"). See Final Act. 8-9.
Claims 16 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer and Bailey (US 2007 /0024644 Al; published Feb.
1, 2007) ("Bailey"). See Final Act. 9-10.
2 The Examiner lists claims 1-3 and 1 7 as rejected under 3 5 U.S. C. § 1 02 (a)
as anticipated by Sauer, a patent issued on August 10, 2010, after the instant
application's effective filing date of October 27, 2009. Sauer qualifies as
prior art at least because of its February 11, 2005 effective filing date, but
Sauer is more appropriately applied under 35 U.S.C. § 102(e). We note that
Sauer's disclosure was previously published on September 15, 2005 as US
2005/0203380 Al. Appellants do not contest Sauer's status as prior art, and
we treat this apparent discrepancy as typographical in nature and consider
claims 1-3 and 17 to be rejected under§ 102(e).
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Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sauer and Lapstun et al. (US 2005/0028400 Al; published Feb. 9,
2006) ("Lapstun"). See Final Act. 10-11.
Claims 12 and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer and Gildenberg (US 2008/0243142 Al; published
Oct. 2, 2008) ("Gildenberg"). See Final Act. 11.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sauer, Aso et al. (US 2005/0068314 Al; published Mar. 31, 2005)
("Aso"), and Naimark. See Final Act. 12-13.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sauer, Gildenberg, Aso, and Naimark. 3 See Final Act. 12-13.
Claims 15 and 31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sauer, Kumar, and Diaz et al. (US 8,284,995 B2; issued
Oct. 9, 2012) ("Diaz"). See Final Act. 13-14.
Claims 18 and 19 stand rejected (see Final Act. 1 ), but no specific
ground of rejection is articulated by the Examiner (see generally Final Act.
3-14).
3 The Examiner lists claim 29 as being rejected over Sauer, Aso, and
Naimark. See Final Act. 12-13. But, claim 29 depends from claim 28,
which the Examiner rejected over Sauer and Gildenberg. See App. Br. 26
(Claims App'x); Final Act. 11. We treat this apparent discrepancy as
typographical in nature, any objection to which Appellants waived by failing
to raise in the Appeal Brief (see 37 C.F.R. 41.37(c)(l)(iv)), and we consider
claim 29 to be rejected as unpatentable over Sauer, Gildenberg, Aso, and
Naimark.
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ANALYSIS
Claims 1-3, 11-15, 17-19, 27-31, and 33
Appellants contend the Examiner erred in finding that Sauer discloses
"determining ... whether a user-controlled device has interacted with the
synthetic object and causing the synthetic object to react to the interaction"
as recited in claim 1. See App. Br. 10-12; Reply Br. 3--4. Appellants argue
that "one of ordinary skill in the art would clearly make a distinction
between [a synthetic] object in an [augmented reality ("AR")] space and
[Sauer' s] simple overlay of graphics on an AR space." App. Br. 11.
Appellants further argue "the biopsy needle in Sauer does not 'interact' with
the overlaid images [(e.g., Sauer's target, extended needle guide path)], and
consequently there is no 'reaction' by the overlaid images." App. Br. 12.
Asserting that Sauer's "overlaid information comprises 'diagnostic
information ... and[] guiding graphics"' (App. Br. 11 (quoting Sauer, col.
3, 11. 63---65)), Appellants contend Sauer's "diagnos[tic] information ... or a
guide path may change given the position of the needle, but this is not a
result of an interaction between the needle and the diagnos[tic] information
[or guide path], it is singularly a result of the movement of the user-
controlled device" (App. Br. 12 (emphasis omitted)).
We find Appellants' arguments unpersuasive. Contrary to
Appellants' first argument, we agree with the Examiner that Sauer' s overlay
of a graphic on an AR space discloses "a synthetic object" because each of
Sauer's overlay graphics (e.g., a target, extended needle guide path) is a
distinct entity (i.e., an "object") rendered on a display. See Spec. 4 ("The
term 'synthetic object' is intended to include, but is not limited to, any object
that can be rendered on a display."); see also Microsoft Computer
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Dictionary 372 (Microsoft Press, 5th ed. 2002) (defining an "object" as "[i]n
graphics, a distinct entity"). Moreover, we find Appellants' remaining
arguments unpersuasive and agree with the Examiner that given the broadest
reasonable interpretation consistent with Appellants' Specification, Sauer
discloses "determining ... whether a user-controlled device has interacted
with the synthetic object and causing the synthetic object to react to the
interaction." See Final Act. 3--4 (citing Sauer col. 4, 11. 29--47; col. 5, 11. 7-
39).
The cited disclosures of Sauer provide not one but, in fact, three ways
of disclosing the "determining" limitation. See Sauer col. 5, 11. 7-39. First,
as discussed by the Examiner, Sauer discloses "the interaction of the
graphical representation of the tool and the target lesion can be represented
using color-coding of missing and hitting of the target by the tool extension
and/or direction." Sauer col. 5, 11. 12-15; see Ans. 2; Final Act. 4. In other
words, a change in color ("causing ... to react") of Sauer's target
("synthetic object"), based on Sauer' s needle ("user-controlled device")
missing or hitting ("the interaction") the target, discloses "causing the
synthetic object to react to the interaction" between the user-controlled
device and the synthetic object. See Ans. 2 (citing Sauer col. 5, 11. 12-15);
Final Act. 4.
Second, as cited by the Examiner, Sauer discloses "[t]he in-plane
distance of the tools' extension to the target can be enhanced by marking the
intersection of the tool's extension with the target plane." Sauer col. 5, 11.
15-18; see Final Act. 4. Marking the intersection of the tool's extension,
which extends to Sauer's target, with the plane of Sauer's target (see, e.g.,
Sauer Fig. 3, items 31, 33) is simply another way of saying that Sauer's
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target is marked. Accordingly, the marking of Sauer's target ("causing the
synthetic object to react") in response to the needle's insertion toward the
target ("to the interaction") also discloses the "determining" limitation. See
Sauer col. 5, 11. 15-18.
Third and also cited by the Examiner, Sauer discloses that the "[ o Jut
of plane distance can be shown using concentric rings, where the radius of
the ring depicts the distance of the tool's tip and the target parallel to the
target's plane normal." Sauer col. 5, 11. 18-21; see Final Act. 4. In other
words, as Sauer's needle moves closer to or further from the target, the
distance between the tool's tip and the target decreases or increases,
resulting in a ring with a decreased or an increased radius. See Final Act. 4
(citing Sauer col. 5, 11. 18-21, 36-39); see also Sauer Fig. 3. Thus, this
change in radius in one of the concentric rings of Sauer' s target discloses
"causing the synthetic object to react" in response to moving the needle
closer to or further from Sauer' s target ("to the interaction").
The Examiner's findings are consistent with Appellants'
Specification, which provides examples of "interaction" between a user-
controlled device and a synthetic object and "causing the synthetic object to
react," but does not specially define these limitations at issue. See Spec. i-fi-1
4 ("[A] mixed-reality environment may allow for a soldier to interact with
synthetic objects that represent enemy troops .... According to another
example, ... a user may interact with a synthetic object (e.g., an opponent)
and one or more synthetic objects (e.g., []tennis balls."), 8 ("the pose of the
user's tennis racket must be accurately calculated to determine if the user
makes contact with the synthetic tennis ball, in order to translate the effect of
returning the synthetic opponent's serve into the mixed-reality
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environment."), 38 (discussing that the user-controlled device can be a
weapon, whose pose and orientation relative to the user's pose can be used
to establish the weapon's aim and determine the virtual effect of a user firing
the weapon, such as a successful shot).
Having considered the Examiner's rejections in light of Appellants'
arguments and the evidence of record, we are unpersuaded of error and
adopt as our own the Examiner's findings, conclusions, and reasoning
consistent with the analysis above. See Final Act. 3-5, 8-9, 10-14; Ans. 2-
5. We sustain the Examiner's rejection of claim 1, as well as independent
claim 17 and dependent claims 2, 3, 11-15, 27-31, and 33, which were not
argued separately with particularity beyond the arguments advanced for
claim 1. See App. Br. 10-12; Reply Br. 2--4.
Regarding claims 18 and 19, although these claims are listed among
those rejected (Final Act. 1) and Appellants acknowledge them as rejected
(App. Br. 3), the Examiner has not made clear their grounds of rejection.
See generally Final Act. 3-14. Accordingly, we are constrained to not
sustain the rejection of claims 18 and 19. Nevertheless, as claims 18 and 19
recite limitations substantially similar to those in claims 2 and 3,
respectively, we designate a new ground of rejection of claims 18 and 19
under 35 U.S.C. § 102(e) as anticipated by Sauer, in accordance with the
Examiner's findings as to claims 2 and 3, respectively. See Final Act. 4
(citing Sauer col. 3, 1.15; col. 6, 1. 32).
Claims 4 and 20
"Appellants argue[] that because Hsu teaches using LADAR sensors
or LADAR data to generate a 3D point cloud for an area, Hsu nowhere
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teaches or[] suggests that the LADAR sensor or system can be combined
with a user-worn sensor such that described in Sauer." See App. Br. 13.
Appellants further argue Hsu and Sauer are not combinable because Sauer's
head-mounted display ("HMD") is for stationary use, while Hsu's LADAR
system is used while moving the LADAR around in a dense region with
foliage. See App. Br. 13-14. Lastly, Appellants argue that "[u]sing
LAD AR in the close confines of the operating room would frustrate the
purpose of the system in Sauer because pose and 3D positioning would be
inaccurate in such a small space." Reply Br. 5.
We find Appellants' arguments unpersuasive. Contrary to
Appellants' first argument, a motivation to combine "need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself." DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006);
see Alza Corp. v. Mylan Labs., Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006)
("There is flexibility in our obviousness jurisprudence because a motivation
may be found implicitly in the prior art. We do not have a rigid test that
requires an actual teaching to combine .... "). Here, the Examiner
concluded "it would have been obvious ... to apply the ladar sensor of Hsu
to the augmented reality system of Sauer, because this enables an added
accuracy in registering and visualizing occluded targets." Final Act. 5. In
view of the foregoing, we find the Examiner has articulated adequate
reasoning based on a rational underpinning to explain why one of ordinary
skill in the art would have been led to make the proposed modification.
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With respect to Appellants' second argument, we disagree because, as
found by the Examiner, Sauer' s HMD is not limited to stationary use and, in
fact, "gives[ s] the user the freedom to move around in a natural way to
inspect the scene from a variety of viewpoints." Ans. 3 (citing Sauer col. 6,
11. 30-34). Lastly, Appellants' argument that using Hsu's LADAR would
frustrate the purpose of Sauer, by reducing the accuracy of Sauer's pose and
3d positioning, at most identifies a tradeoff that does not necessarily prevent
the proposed combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006) ("[A] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine."); Winner Int 'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullify its use
as a basis to modify the disclosure of one reference with the teachings of
another. Instead, the benefits, both lost and gained, should be weighed
against one another.").
Further, even assuming the proposed combination of the devices
would indeed reduce the accuracy of Sauer's pose and 3d positioning,
Appellants do not point to any persuasive evidence showing that such a
reduction in accuracy would have prevented or even discouraged a person of
ordinary skill in the art from combining the teachings of Sauer and Hsu to
attain an increase in the accuracy of registering and visualizing occluded
targets, as explained by the Examiner (see Final Act. 5). See App. Br. 13-
14; Reply Br. 5. Accordingly, we sustain the Examiner's rejection of claim
4 as well as claim 20, which recites similar limitations and was argued
together with claim 4. See App. Br. 13-14; Reply Br. 5.
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Claims 5-9 and 21-25
Appellants argue Sauer and Scott are not combinable because
replacing Sauer' s stereoscopic cameras with Scott's inertial measurement
units (IMUs) would frustrate the entire purpose of Sauer, which is to
generate a stereo image or view of the patient's body so as to provide
guidance for the use of the biopsy needle. See App. Br. 14--15. We find
Appellants' argument unpersuasive because the argument mischaracterizes
the Examiner's rejection. As reasoned by the Examiner, the aim of the
Examiner's combination of Sauer and Scott was not to replace Sauer's stereo
camera with Scott's IMU sensor, as Appellants argue, but rather to further
aid Sauer's pose and orientation teachings using Scott's IMU sensors. See
Ans. 4; Final Act. 5---6 (citing Scott i-f 43). Moreover, Appellants do not
rebut this reasoning of the Examiner in the Reply Brief. See Reply Br. 6.
Accordingly, we sustain the Examiner's rejection of claim 5 as well as
claims 6-9 and 21-25, which require a similar limitation and were not
argued separately with particularity beyond the arguments advanced for
claim 5. See App. Br. 14--15; Reply Br. 6.
Claims 16 and 32
Appellants argue Bailey's bees are synthetic objects that interact with
each other and even support collision detection, but the bees do not react to a
user-interaction or a user-controlled device as required in claims 16 and 32.
See App. Br. 16-17; Reply Br. 7-8. Appellants' arguments are unpersuasive
because the arguments attack the references individually and fail to
substantively address what a person of ordinary skill would have understood
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from the combined teachings of the Sauer and Bailey references (see Final
Act. 3--4, 9-10; Ans. 5). See In re Keller, 642 F.2d 413, 426 (CCPA 1981)
("[O]ne cannot show non-obviousness by attacking references individually
where, as here, the rejections are based on combinations of references.").
Moreover, as found by the Examiner, Bailey was relied on merely to
teach multiple users in an AR environment. See Ans. 5; Final Act. 9-10
(citing Bailey Abstract). We agree with the Examiner that when combined
with Sauer's user-controlled tool interacting with a synthetic object, the
combination of Sauer and Bailey would enable an improved realistic AR
environment having a plurality of users to view and interact with the
synthetic object. See Ans. 5. Accordingly, we sustain the Examiner's
rejection of independent claim 16, as well as independent claim 32, which
recites a similar limitation and was argued together with claim 16. See App.
Br. 16-17; Reply Br. 7-8.
DECISION
The decision of the Examiner to reject claims 1-3 and 17 under
35 U.S.C. § 102(e) is affirmed.
The decision of the Examiner to reject claims 4-9, 11-16, 20-25, and
27-33 under 35 U.S.C. § 103(a) is affirmed.
The decision of the Examiner to reject claims 18 and 19 is reversed.
We enter a new ground of rejection for claims 18 and 19 under 35
U.S.C. § 102(e) as anticipated by Sauer.
Section 41.50(b) provides that "[a] new ground of rejection ... shall
not be considered final for judicial review."
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Section 41.50(b) also provides that Appellant, 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
prosecution 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.
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 ).
See 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
37 C.F.R. § 41.50(b)
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