Ex Parte KurzweilDownload PDFPatent Trial and Appeal BoardNov 15, 201710735595 (P.T.A.B. Nov. 15, 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. 10/735,595 12/12/2003 Raymond C. Kurzweil 14202-005001 1751 26161 7590 11/17/2017 FISH & RICHARDSON P.C. (BO) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER DUFFY, DAVID W ART UNIT PAPER NUMBER 3716 NOTIFICATION DATE DELIVERY MODE 11/17/2017 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAYMOND C. KURZWEIL Appeal 2016-0012921 Application 10/735,5952 Technology Center 3700 Before MICHELLE R. OSINSKI, TARA L. HUTCHINGS, and MATTHEW S. MEYERS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed May 18, 2015), Reply Brief (“Reply Br.,” filed Nov. 6, 2015), and Specification (“Spec.,” filed Dec. 12, 2003), and the Examiner’s Answer (“Ans.,” mailed Sept. 8, 2015) and Final Office Action (“Final Act.,” mailed Sept. 17, 2014). 2 Appellant identifies Kurzweil Technologies, Inc. as the real party in interest. App. Br. 1. Appeal 2016-001292 Application 10/735,595 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—30. An oral hearing was held on October 3, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED INVENTION Appellant’s claimed invention “relates to virtual reality devices, and in particular, using these devices for communication and contact.” Spec. 1, 11. 4—6. Claims 1, 14, 18, 24, and 26 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A virtual reality encounter system comprising, a first mannequin; a first camera supported by the first mannequin, the first camera for capturing a first image of a scene having a first environment in which the mannequin is disposed; a first processor receiving in real time the first image of the scene from the first camera supported by the mannequin, the first processor overlaying a virtual environment over one or more portions of the real-time received first image to form a first image of a virtual scene with the first image of the virtual scene including at least one remaining portion of the real-time received first image having the first environment, and with the overlaid virtual environment of the one or more portions, being a replacement background that has the scene that the first mannequin captures in the first image being replaced with a different environment from the first environment; and sending the first image of the virtual scene including the at least one remaining portion of the real-time received first image in real time to a communications network; and a first set of goggles to render a second image of a virtual scene from signals received from the communications network. 2 Appeal 2016-001292 Application 10/735,595 REJECTIONS3 Claims 1—30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1—20 of Application No. 10/735,294 in view of Li (US 2002/0186881 Al, pub. Dec. 12, 2002). Claims 1—30 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter that Appellant regards as the invention. Claims 1, 12, and 18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yee (US 6,016,385, iss. Jan. 18, 2000) and Li. Claims 2—9, 11, 13, 19, 21, 23, 26, 27, and 30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yee, Li, and Ahdoot (US 5,913,727, iss. June 22, 1999), or in the alternative, over Yee, Li, Ahdoot, and Abbasi (US 6,786,863 B2, iss. Sept. 7, 2004). Claims 10 and 20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yee, Li, Ahdoot, and Gutierrez (US 4,982,281, iss. Jan. 1, 1991), or in the alternative, over Yee, Li, Ahdoot, Abbasi, and Gutierrez. Claims 14—17, 22, and 24—29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Yee, Li, and Ahdoot, or in the alternative, over Yee, Li, Ahdoot, and Abbasi. 3 The nonstatutory double patenting rejection of claims 1—30 over claims 1—29 of Kurzweil (US 8,600,550 B2, iss. Dec. 3, 2013) and Li (US 2002/0186881 Al, pub. Dec. 12, 2002) has been withdrawn. Ans. 3. 3 Appeal 2016-001292 Application 10/735,595 ANALYSIS Double Patenting Claims 1—30 stand provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1—20 of Application No. 10/735,294 in view of Li. We decline to reach the rejection and leave it to the Examiner to determine whether it is still proper. See Ex Parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).4 Indefiniteness In rejecting independent claims 1, 14, 18, 24, and 26 under 35 U.S.C. §112, second paragraph, the Examiner takes the position that the term “different environment,” as recited in claim 1, and similarly recited in claims 14, 18, 24, and 26, is a relative term rendering each of the claims indefinite. See Final Act. 5—7. The Examiner maintains that “[i]t is unclear to what degree of modification would be required to constitute a ‘different environment.’” Id. at 5 (discussing claim 1); see also id. at 5—7 (discussing claims 14, 18, 24, and 26). We agree with Appellant that one of ordinary skill in the art would understand the phrase “different environment” in light of the Specification to be any replacement environment. App. Br. 12. For example, the Specification describes adding waves to a beach scene or screaming eagles to a mountaintop scene, as well as to at an entirely different environment, such as a beach or mountaintop instead of a room. See Spec. 7,1. 27—8, 1. 13; see also Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 4 Notably, an Amendment to the claims was filed on August 1, 2017 in connection with Application No. 10/735,294. 4 Appeal 2016-001292 Application 10/735,595 1565, 1576 (Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. §112, second paragraph is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.”). The Examiner finds that the phrase “life-like,” as recited in claim 5, and similarly recited in 19, is a relative term rendering each of the claims indefinite. See Final Act. 5 (claim 5), 6 (claim 19). The Examiner maintains that “[i]t is unclear how one of ordinary skill in the art would be able to objectively determine a feature was ‘life-like’ or not.” Id. at 5 (discussing claim 5); see also id. at 6 (discussing claim 19). Yet, the ordinary meaning of life like is “accurately representing or imitating real life.” See https://www.merriam-webster.com/dictionary/lifelike; see also Collins English Dictionary, HarperCollins Publishers (2014) (lifelike means “closely resembling or representing life”). In our view, one of ordinary skill in the art would understand the phrase “life-like features” in light of the Specification to mean that the features of the robot (claim 5) or mannequin (claim 19) closely resemble those of a human, which the robot or mannequin represents. See, e.g., Spec. 1,1. 9-3,1. 31, Figs. 1—2. The Examiner determines that the phrase “different motion signals,” as recited in claim 24, is a relative term rendering the claim indefinite. The Examiner takes the position that “[i]t is unclear how one of ordinary skill in the art would determine if a particular set of motion signals were ‘different’ or not[,] or even what the basis of comparison would be to attempt to determine differentness.” Final Act. 6—7. Yet, we agree with Appellant that the claim language itself defines the basis of comparison, namely that the second, different motion signals are different from the first motion signals. 5 Appeal 2016-001292 Application 10/735,595 See App. Br. 13. In the Answer, the Examiner maintains that “it is not clear from the claim limitations if the second signals may be considered different merely by being time delayed.” Ans. 4. But we agree with Appellant that the meaning is sufficiently clear when read in light of the Specification that the second motion signal is not different by merely being time delayed. See Reply Br. 3. Instead, the Specification describes that the virtual encounter system allows “two people to touch and to feel each other[,] as well as manipulate objects in each other’s environment.” Spec. 2,11. 6—8; see also, e.g., id. at 7,11. 11—19 (describing enabling a user in a second location to “feel” objects in a first location via a combination of a sensors at the first location and actuators at the second locations). With respect to claim 13, the Examiner determines that there is insufficient antecedent basis for the limitation “the tactile signals.” Final Act. 5. However, we agree with Appellant that one of ordinary skill in the art would reasonably understand from the claim language that the claimed “tactile signals,” which are sent wirelessly from a transmitter of the first robot, refers to “the first tactile signals,” as recited in claim 2, because claim 2 recites that first tactile signals are sent from sensors positioned along the exterior of the first robot and second tactile signals are received by actuators on a bodysuit. See Reply Br. 2. The Examiner maintains that the limitation “the second set of goggles receives the overlays the virtual environment,” as recited in claim 30, is unclear, but interprets the phrase to mean that “the second set of goggles receives the overlaid virtual environment.” Final Act. 8. Appellant acknowledge that the Examiner’s interpretation is correct. App. Br. 14. In our view, one of ordinary skill in the art would reasonably understand the 6 Appeal 2016-001292 Application 10/735,595 claimed phrase to mean that the second set of goggles receives the overlaid virtual environment. See Orthokinetics, 806 F.2d at 1576. In view of the foregoing, we do not sustain the Examiner’s rejections of claims 1—30 under 35 U.S.C. § 112, second paragraph. Independent Claims 1 and 18 We are persuaded by Appellant’s argument that the Examiner erred in rejecting independent claims 1 and 18 under 35 U.S.C. § 103(a) because Yee and Li do not disclose or suggest a first processor receiving in real time the first image of the scene from the first camera supported by the mannequin, the first processor overlaying a virtual environment over one or more portions of the real-time received first image to form a first image of a virtual scene with the first image of the virtual scene including at least one remaining portion of the real-time received first image having the first environment, and with the overlaid virtual environment of the one or more portions, being a replacement background that has the scene that the first mannequin captures in the first image being replaced with a different environment from the first environment, as recited in claim 1, and similarly recited in claim 18. See App. Br. 17—20. The Examiner relies on Yee for disclosing a first processor receiving in real time the first image of the scene from the first camera supported by the mannequin. Final Act. 8 (citing Yee, col. 5,11. 31—37). The Examiner acknowledges that Yee does not disclose the features relating to overlaying a virtual environment over one or more portions of the real-time images, and relies on Li to cure the deficiency. See Final Act. 9 (citing Li 116). Specifically, the Examiner finds that Li “discloses that for teleconferencing it may be desirable to replace the background of a recorded image in order to make it more acceptable or persuasive to certain participants.” Id. (citing Li 7 Appeal 2016-001292 Application 10/735,595 116); see also Ans. 5 (“Li provides a specific reason to include [an overlaid virtual environment] capability to make the system more comfortable to particular users”). Yee describes a remote controlled robot that is controlled by an operator reacting to feedback signals originating from the robot. Yee, col. 1, 11. 5—7. The operator sits in a command chair 11 wearing a virtual reality helmet 13, and wearing a glove 20 mounted on one end of an exoskeletal arm that is hingeably attached to a backrest 15 of command chair 11. Id. at col. 4,11. 9—14, Fig. 2. A pair of video robot cameras 22 are mounted on robot head 29 that correspond to the operator’s eyes. Id. at col. 5,11. 11—3; Fig. 3. Video “operator” screens 24 are mounted in helmet 13. Id. at col. 5, 11. 13—14; Fig. 4. Robot head 29 is under the control of command station 12 to move in a direction that duplicates the motion of the operator’s head. Id. at col. 5,11. 17—18. Cameras 22 are pointed in a direction in robot space corresponding to the direction of the operators eyes in operator space. Id. at col. 5,11. 19—21. Video information from each camera 22 is related through command system 14 back to a respective screen 24 in operator space, thereby giving an image to the operator. Id. at col. 5,11. 31—35. The robot head provides a visual interface between the operator and people encounter the robot. Id. at col. 5,11. 41—43. Li relates to image background replacement, such as in video conferences. Li 116. Li describes that a video conference may be more persuasive if the background during filing is replaced with a new background. Id. And Li describes that a video artist also may wish to replace the background of a video sequence. Id. Therefore, Li expresses 8 Appeal 2016-001292 Application 10/735,595 that a system facilitating convenient image and video background replacement is highly desired. Id. The Examiner determines that “[o]ne of ordinary skill in the art would have recognized [from Li] the advantages of background replacement to make teleconferencing more acceptable or persuasive to users to broaden its appeal.” Final Act. 9. And the Examiner concludes that it would have been obvious to one skilled in the art at the time of the invention to have modified Yee in view of Li to have used a processor to overlay a virtual background over the acquired image in order to make the teleconferencing more acceptable or persuasive to users and thus broaden the appeal of the system. Id. But the difficulty with the Examiner’s reasoning, as noted by Appellant, is that Yee is not a teleconferencing system, and thus, has no need to make a teleconference more acceptable by way of a virtual background. See Reply Br. 6—7. Instead, Yee “relates to remote controlled robots and particularly toward a robot that is controlled by an operator reacting to feedback signals originating from the robot.” Yee, col. 1,11. 5—7. The main purpose of Yee’s robot head “is to provide a visual interface between the operator and people who encounter the robot.” Yee, col. 5,11. 41—43. It is unclear why one of ordinary skill in the art would have modified Yee to overlay a virtual background over the image acquired from the robot environment given that the operator controls the robot based on this image. See Yee col. 3,11. 1—8. Stated differently, because the operator gathers data regarding the robot’s environment to control a robot interacting with the public, it is unclear why it would be desirable to alter this data received by the operator. As noted by Appellant, altering Yee’s operator’s perception of 9 Appeal 2016-001292 Application 10/735,595 the robot environment by overlaying a virtual background, as described by Li, could mislead the operator controlling the robot. See App. Br. 19. In view of the foregoing, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 1 and 18. Independent Claims 14, 24, and 26 Independent claims 14, 24, and 26 include language substantially similar to the language of claims 1 and 18, and stand rejected based on the same findings and rationale applied with respect to claims 1 and 18. See Final Act. 14. Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claims 14, 24, and 26 for the same reasons set forth above with respect to claims 1 and 18. Dependent Claims 2—13, 15—17, 19—23, 25, and 27—30 Claims 2—13, 15—17, 19-23, 25, and 27—30 each depend from one of claims 1, 14, 18, 24, and 26. The Examiner’s rejections of these dependent claims do not cure the deficiencies in the rejection of the independent claims. Therefore, we reverse the Examiner’s rejections under 35 U.S.C. § 103(a) of dependent claims 2—13, 15—17, 19-23, 25, and 27—30 for the same reasons discussed above with respect to the independent claims. DECISION We decline to reach the provisional rejection of claims 1—30 on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1—20 of Application No. 10/735,294. The Examiner’s rejections of claims 1—30 under 35 U.S.C. § 112, second paragraph, are reversed. 10 Appeal 2016-001292 Application 10/735,595 The Examiner’s rejections of claims 1—30 under 35 U.S.C. § 103(a) are reversed. REVERSED 11 Copy with citationCopy as parenthetical citation