13783619 (P.T.A.B. Sep. 21, 2018)

Ex Parte Olson

Patent Trial and Appeal BoardSep 21, 2018

13783619 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/783,619 03/04/2013 67337 7590 09/25/2018 DYKEMA GOSSETT PLLC (STJ) 4000 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 FIRST NAMED INVENTOR Eric S. Olson 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. OG-049701US/065513-001186 4121 EXAMINER HOSSAIN, FARZANA E ART UNIT PAPER NUMBER 2482 NOTIFICATION DATE DELIVERY MODE 09/25/2018 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): ASJM_Patents@abbott.com MN-IPMail@dykema.com Patents@dykema.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC S. OLSON Appeal2018-001491 Application I 3/783,619 Technology Center 2400 Before DENISE M. POTHIER, DAVID M. KOHUT, and CATHERINE SHIANG, Administrative Patent Judges. POTHIER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1,2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-9, 11-22, and 24. See generally Appeal Br. Claims 10 and 23 have been canceled. Appeal Br. 24, 28 (Claims App'x). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. 1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed February 28, 2017, the Appeal Brief (Appeal Br.) filed July 17, 2017, the Examiner's Answer (Ans.) mailed September 29, 2017, and the Reply Brief (Reply Br.) filed November 29, 2017. 2 The real party in interest is listed as St. Jude Medical, Atrial Fibrillation Division, Inc. Appeal Br. 4. Appeal2018---001491 Application 13/783,619 Invention Appellant's invention "relates to two-dimensional, three-dimensional, and stereoscopic displays of anatomical models and medical devices in a mapping and navigation system." Spec. ,r 3, Figs. 1, 4A-B. Independent claim 14 is reproduced below with emphasis: 14. A system for displaying a stereoscopic representation of an anatomical model, comprising: an electronic control unit (ECU); a computer-readable memory coupled to said ECU; an imaging apparatus configured to capture an image for determining a user's viewing position; positioning logic, stored in said memory and configured to be executed by said ECU, configured to determine said user's viewing position and orientation relative to the anatomical model according to said image; and display logic, stored in said memory and configured to be executed by said ECU, configured to render at least two views of the anatomical model, wherein said display logic selects a respective view frustum for each of said at least two views according to said user's viewing position and orientation relative to the anatomical model, and to provide said at least two views for output to a display for the user to view as a stereoscopic image. Appeal Br. 25 (Claims App.) The Examiner relies on the following as evidence of unpatentability: Grzeszczuk US 2002/0077543 Al June 20, 2002 Sumanaweera US 2008/0080610 Al Mar. 26, 2009 Blayden US 2010/0053540 Al Mar. 4, 2010 Stamate US 2012/0038365 Al Feb. 16,2012 Luikin US 2012/0190925 Al July 26, 2012 Nourbakhsh US 2012/0190439 Al July 26, 2012 Porter US 2013/0135576 Al May 30, 2013 Xin US 2014/0129990 Al May 8, 2014 2 Appeal2018---001491 Application 13/783,619 MedicalSafetyGlasses.com, PRESCRIPTION X-RAY RADIATION LEADED EYEWEAR 1-3 3 (March 20, 2015) ("PX"). The Rejections Claims 13 and 15 are rejected under 35 U.S.C. Â§ 112(a) orÂ§ 112, first paragraph (pre-AIA) as failing to comply with the written description requirement. Final Act. 5---6. Claims 14, 18, and 20 are rejected under 35 U.S.C. Â§ 102(e) as anticipated by Xin. Final Act. 6-8. Claims 1--4, 9, 16, 17, and 19 are rejected under 35 U.S.C. Â§ 103(a) unpatentable over Xin and Stamate. Final Act. 8-11. Claim 5 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin, Stamate, and Blayden. Final Act. 11-12. Claims 6-8 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin, Stamate, and PX. Final Act. 12-13. Claims 11 and 12 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin, Stamate, and Grzeszczuk. Final Act. 13-14. Claim 13 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin, Stamate, and Sumanaweera. Final Act. 14. Claim 15 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin and Luiken. Final Act. 14--15. Claims 21, 22, and 24 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Xin and Nourbakhsh. Final Act. 15-17. 3 Three pages of this document were provided, and these pages will be referred to sequentially. 3 Appeal2018---001491 Application 13/783,619 LACK OF WRITTEN DESCRIPTION REJECTION The Examiner concludes claims 13 and 15 fail to comply with the written description requirement because the Specification does not disclose a "logic ... configure to tilt ... the anatomical model" as recited. Final Act. 5---6. Appellant does not contest this rejection in the Appeal Brief. See generally Appeal Br.; Ans. 2. For the first time in the Reply Brief, Appellant responds to this rejection and asserts an ordinary skilled artisan would be able to understand the claimed invention. 4 Reply Br. 4--5. This argument is waived because Appellant has not shown any good cause for the belated presentation. See 37 C.F.R. Â§ 41.41(a)(2) (stating "[a]ny argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner's answer ... will not be considered by the Board for purposes of the present appeal, unless good cause is shown.") In any event, the passage noted by Appellant in the Reply Brief discloses altering-not tilting as recited-the model's view based on a user's input. Spec. ,r 50, cited in Reply Br. 4. Accordingly, we sustain the lack of written description rejection. 4 To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351(Fed. Cir. 2010). 4 Appeal2018---001491 Application 13/783,619 ANTICIPATION REJECTION OVER XIN Appellant argues claims 14, 18, and 20 as a group. Appeal Br. 9-12. We select claim 14 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Regarding independent claim 14, the Examiner finds Xin discloses all its limitation, including the recited "display logic selects a representative view frustum for each of said two views according to said user's viewing position and orientation relative to the anatomical model" in dispute. Final Act. 6-7 (citing Xin ,r,r 68---69, 163, 191-192, 195,198,202,203,207, and Figs. IA, 2, 10). Appellant argues Xin monitors a user's viewing location and manipulates an object on a display laterally based on a user's location, regardless of the user's orientation. Appeal Br. 9-11 ( citing Xin ,r 202 and reproducing Xin, Figs. 36A-B5); see Reply Br. 5-7. Appellant asserts Xin's teaching does not provide a display logic that "selects a respective view frustum" according to both a user's viewing positon and orientation as recited. Appeal Br. 9-12. Appellant additionally contends Xin "maintain[s] an existing, generic, view frustum" "that is substantially perpendicular to a surface of the display, regardless of the user's viewing position (relative to a display)." Appeal Br. 10 (citing Xin ,r 202). ISSUE Under Â§ 102, has the Examiner erred in rejecting claim 14 by finding that Xin discloses "said display logic selects a respective view frustum for each of said at least two views [ of the anatomical model] according to said user's viewing position and orientation relative to the anatomical model"? 5 Appellant mistakenly refers to Figures 35A and B. Appeal Br. 9. 5 Appeal2018---001491 Application 13/783,619 ANALYSIS We begin by construing the key disputed limitation of claim 14 that calls for, in pertinent part, "select[ing] a respective view frustum ... according to said user's position and orientation." Appeal Br. 25 (Claims App'x). The Specification broadly describes "view frustums" as "virtual points of view." Spec. ,r 51, cited in Ans. 14. We thus agree with the Examiner that a "view frustum" is a virtual view point. Ans. 14. In illustrative embodiments, the Specification describes the view frustum is based on "viewing position of the physician" (Spec. ,r 52, cited in Ans. 14) and that "[t]he viewing position can be determined by,for example only, tracking the position and orientation of one or more of the physician's head, the physician's eyes, and the stereoscopic eyewear 54" (Spec. ,r 45 (emphasis added)). The Specification further states the "view frustum for each eye can be altered according to horizontal and/or vertical position of the physician's viewing position relative to the display 22, so that the physician can look 'around' the displayed model(s) by moving his or her head from side to side or up and down." Spec. ,r 52. Although these discussions inform our construction of the disputed phrase "said user's viewing position and orientation," we decline to import these specific embodiments into claim 14, which fails to recite the user's orientation is based on the user's head, eyes, or eyewear movement. 6 6 In contrast, claim 1 specifically recites an orientation of a user's head, eyes, or eyewear. Appeal Br. 22 (Claims App'x). 6 Appeal2018---001491 Application 13/783,619 An ordinary understanding of "orientation" includes ''[t]he relative physical position or direction of something.'17 Given this understanding, we construe the recited "display logic selects a respective view frustum ... according to said user's position and orientation" to mean logic that selects a virtual point of view based on (a) a user's position and (b) a user's position or direction relative to something else. In contrast with Appellant's assertions (Appeal Br. 11 ), the recited user "orientation" does not require "the view frustum" to be adjusted by rotating or tilting as asserted. See Ans. 16 ( stating "[ t ]here is no[] claim language stating adjustment or rotation or tilting .... "). Nor does the claim language require or "account[] for all 6 degrees of freedom of the user" (Reply Br. 8) when considering the plain meaning of "orientation." Xin discloses a manipulation module ( e.g., display logic) that generates different viewing perspectives depending on the user's position relative to the display. 8 Xin ,r,r 198, 202-203, Figs. 2, 36A-B, cited in Final Act. 7. For example, Xin shows a user wearing glasses (e.g., 2004) viewing an object ( e.g., 2006), detecting the area or location a user is currently standing and that the user has moved ( e.g., moving to the right side) using proximity sensors, and moving the object toward the side where the user has moved. Xin ,r,r 202, Figs. 36A-B. Regardless of whether the detected position is only a lateral position as asserted (Appeal Br. 9), Xin's detected 7 Orientation, ENGLISH OXFORD DICTIONARY ( defs. 1 and 1.1 ), available at https:// en. oxforddictionaries.com/ definition/us/ orientation. 8 Upon review, the Specification discusses selecting a view frustum according a viewing position of the physician or eyewear, with no discussion what the position is relative to (Spec. ,r,r 43--47 and 52), or according to the physician's position relative to a display (Spec. ,r 52) rather than "the anatomical model" as recited. 7 Appeal2018---001491 Application 13/783,619 position is still a "user's viewing position" as broadly as recited. Also, Xin selects a virtual view point (e.g., Figure 36A selects a view point from the left and Figure 36B selects a view point from the right) based on the user's position (e.g., located on the left or the right side). Xin ,r 202, Figs. 36A-B9; see also Ans. 15. As for the recited "view frustum" also being selected "according to said user's ... orientation," the Examiner elaborates that Xin tracks a finger and position of a user's body relative to a model and that this discloses the recited "orientation" recitation. Ans. 14--16 (citing Xin ,r,r 198, 202-203). We therefore disagree that the Examiner is ignoring the recited selecting of "view frustum" according to the user's orientation. Reply Br. 6. As an example, Xin discloses an embodiment where the position of the user's finger and body are tracked to determine a 3D object selected by a user. Xin ,r 203. Determining whether a user has selected an object based on the position of both a user's finger or body in Xin (Xin ,r 203) involves determining an orientation of the finger and body to each other ( as well as the object) and further selecting a virtual point of view, which includes highlighting the selected object, based on this orientation relative to the 3D object. Xin ,r 203. Xin thus discloses a display logic selecting "a respective view frustum ... according to said user's position and orientation relative to the anatomical model" as recited. Xin additionally discloses steps performed when manipulating a 3D object, including using a computing device to process user manipulation gestures or actions that have been made by the user with a graphic object. 9 Notably, Xin's Figures 36A and 36B are similar to Figures 4A and 4B in the Specification. Compare Xin, Figs. 36A-B with Spec., Figs. 4B-A. 8 Appeal2018---001491 Application 13/783,619 Xin ,r 198 (citing Figures 1 lA-E), cited in Final Act. 7 and Ans. 14. The accompanying disclosure of Figures 1 lA-E discusses determining various pointer events ( e.g., finger movements) and thus how to move and view a 3D object based on the pointer moving in a certain direction (e.g., an orientation, such as a user's finger directional movement relative to something else). Xin ,r,r 91-97, Figs. lOA-D, 1 lA-B. As such, Xin discloses embodiments where the "display logic" not only selects the "respective view frustum" or virtual view point "according to the user's viewing position" but also according to the user's "orientation" (e.g., the user's finger direction relative to something else) as broadly as recited. Appellant contends Paragraph 203 does not use the word "orientation." Reply Br. 7. We agree, but this fact does not demonstrate Xin fails to disclose the disputed recitation. See In re Bond, 910 F .2d 831, 832 (Fed. Cir. 1990) (indicating identity of terminology between the prior art and the claim language is not required to teach the limitations in claims). Appellant also asserts Xin "does not enable an embodiment wherein the view frustum considers ... the orientation of the user" and the Examiner is using improper hindsight. Reply Br. 7. We are not persuaded. First, we disagree that Xin fails to teach the disputed feature for the above reasons. Second, improper hindsight is a concept related to obviousness, not an anticipation. Third, Appellant merely asserts, without probative evidence of undue experimentation, 10 that Xin is not operable or not enabled to make the recited view frustum according to a user's orientation. 10 Enablement requires that the specification teach those in the art to make and use the invention without undue experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 9 Appeal2018---001491 Application 13/783,619 Appellant additionally asserts Xin "maintain[ s] an existing, generic, view frustum," which is substantially perpendicular to a surface of the display. Appeal Br. 11; see also Appeal Br. 10. We are not persuaded. This argument amounts to a mere assertion by counsel and is not probative. See Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Paragraph 202 does not discuss a view frustum that is "substantially perpendicular to a surface of the display. Xin ,r 202, Figs. 36A-B. Additionally, Figure 36A and B show two different, virtual view points (e.g., view frustums) and thus, we disagree that the view frustum (e.g., virtual view point) for these two views is generic as asserted. Appeal Br. 10-11. For the foregoing reasons, Appellant has not persuaded us of error in the rejection of independent claim 14 and claims 18 and 20, which are not separately argued. OBVIOUSNESS REJECTION OVER XIN AND STAMATE Appellant argues claims 1--4, 9, 16, 17, and 19 as a group. Appeal Br. 12-16. We select claim 1 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Regarding independent claim 1, the Examiner finds that Xin teaches all its limitations, except for the recitation that the user's viewing position and orientation are "in response to a position and orientation of one or more of the user's head, the user's eyes, and stereoscopic eyewear" in the claim. Final Act. 8-9 (citing Xin ,r,r 68-69, 163, 195, 198, 202-203, 207, and Figs. 1, 2A, 10). The Examiner turns to Stamate in combination with Xin to teach the missing feature. Final Act. 9 ( citing Stamate ,r,r 35, 37, 42, and 56, Figs. 2, 3B, and 9). 10 Appeal2018---001491 Application 13/783,619 Appellant repeats the arguments that were presented for claim 14 concerning Xin. Appeal Br. 13-14. We are not persuaded for the above- stated reasons. Appellant additionally disputes how the Examiner construes the phrase "configured to" in claim 1 to be optional language. Appeal Br. 14--16. The Examiner responds that "all limitations were rejected" and that these remarks were made "in the response to arguments" section. Ans. 17. We agree. Thus, regardless of the Examiner's remarks, the rejection of claim 14 considers all its limitations. Final Act. 8-9. We therefore sustain the rejection of claims 1--4, 9, 16, 17, and 19 under Â§ 103 based on Xin and Stamate. OBVIOUSNESS REJECTION OVER XIN AND NOURBAKHSH Appellant argues claims 21, 22, and 24 as a group. Appeal Br. 18-20. We select claim 21 as representative. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). Regarding independent claim 21, the Examiner finds Xin discloses its limitation, except for the recited "device control logic ... configured to output a signal configured to prevent the user's field of vision from being obstructed for as long as said viewing position indicates that the user is not viewing the display." See Final Act. 15-16 (citing Xin ,r,r 68-69, 163, 191-192, 195, 198, 202-203, 207, and Figs. IA, 2, and 10). The Examiner turns to N ourbakhsh in combination with Xin to teach the missing limitation. Final Act. 16-17 (citing Nourbakhsh ,r,r 40, 50). Appellant argues the proposed combination does "not appear to correspond to the claimed invention at least because Nourbakhsh appears to use optical signals between a TV and a user to determine when the user's field of vision is obstructed ... , not the imaging apparatus." Appeal Br. 19. 11 Appeal2018---001491 Application 13/783,619 Appellant also contends "the combination fails to provide an enabling disclosure for the proposed modification." Appeal Br. 19. ISSUE UnderÂ§ 103, has the Examiner erred in rejecting claim 21 by finding that Xin and N ourbakhsh teach or suggest "an imaging apparatus configured to capture an image for determining a user's viewing position" and "device control logic ... configured to output a signal configured to prevent the user's field of vision from being obstructed for as long as said viewing position indicates that the user is not viewing the display" as recited? ANALYSIS Based on the record, we find no error in the rejection of claim 21. The Examiner explains (Ans. 20-21) claim 21 requires the imaging apparatus to capture an image for determining a user's viewing position, which Xin teaches. Ans. 20 ( citing Xin ,r 203). Claim 21 further requires a device logic-not the imaging apparatus-to output a signal to prevent obstructing a user's vision based on what the viewing position, which is captured by the imaging apparatus, indicates. Appeal Br. 27 (Claims App'x). Thus, to the extent argued (Appeal Br. 19), we disagree with Appellant that the references have to teach outputting signals between an imaging apparatus and a user to correspond to the claimed invention. See Appeal Br. 19. Nourbakhsh teaches eyewear receiving a signal and "causing the glasses to become transparent ... if the user looks away from the television." Nourbakhsh ,r 50. When combining this teaching with Xin, the 12 Appeal2018---001491 Application 13/783,619 combination would have predictably yielded to one skilled in the art the recited "logic ... configured to output a signal configured to prevent the user's" vision from being obstructed based on the where the user is looking (e.g., the user's viewing position). See Final Act. 15-17. To be sure, as claimed, the device control logic prevents obstructing the user's vision based on what the viewing position, which is determined from an image captured by the imaging apparatus, indicates. Appeal Br. 27 (Claims App'x). But, as noted by the Examiner (Ans. 21), Appellant's assertions focus on Nourbakhsh (Appeal Br. 19) and do not contemplate what the references collectively teach or suggest. Appellant also asserts "the combination is not enabled as it is not clear how the system of Xin could be used in conjunction with the optical system ofNourbaukhsh to prevent obstruction of a user's vision based on an image." To the extent that Appellant contends the proposed combination would render one of the reference inoperable or that that such a combination would have been uniquely challenging or otherwise beyond the level of ordinarily skilled artisans (see Appeal Br. 19), Appellant has provided insufficient persuasive evidence on the record to prove such contentions. See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Moreover, the features ofNourbakhsh do not have to be bodily incorporated into the structure of Xin as Appellant appears to assert. See Appeal Br. 19. "Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art." In re Keller1 642 F.2d 413,425 (CCPA 1981)). Appellant has not successfully rebutted the Examiner's findings and conclusion in this regard and when 13 Appeal2018---001491 Application 13/783,619 considering what the references would have collectively suggested to one skilled in the art as set forth in Keller. Accordingly, Appellant has not persuaded us of error in the rejection of independent claim 21 and claims 22 and 24, which are not separately argued. THE REMAINING OBVIOUSNESS REJECTIONS As for the remaining rejections, Appellant does not separately argue any of the rejected claims but rather relies on their dependencies to their base claims. Appeal Br. 17-18. Claims 5-8, 11-13, and 15 depend directly or indirectly from claims 1 or 14. We therefore are not persuaded the Examiner erred in rejecting claims 5-8, 11-13, and 15 for reasons previously stated concerning claims 1 and 14 and sustain the remaining rejections. DECISION We affirm the Examiner's rejection of claims 13 and 15 under 35 U.S.C. Â§ 112(a) orÂ§ 112, first paragraph (pre-AIA). We affirm the Examiner's rejection of claims 14, 18, and 20 under 3 5 U.S.C. Â§ 102(e). We affirm the Examiner's rejections of claims 1-9, 11-13, 15-17, 19, 21, 22, and 24 under 35 U.S.C. Â§ 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 14