Ex Parte Olson

Patent Trials and Appeals Board

Sep 21, 2018

13783619 - (D) (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. § 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. § 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
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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. § 112(a) or§ 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. § 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. § 103(a)
unpatentable over Xin and Stamate. Final Act. 8-11.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Xin, Stamate, and Blayden. Final Act. 11-12.
Claims 6-8 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Xin, Stamate, and PX. Final Act. 12-13.
Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Xin, Stamate, and Grzeszczuk. Final Act. 13-14.
Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Xin, Stamate, and Sumanaweera. Final Act. 14.
Claim 15 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Xin and Luiken. Final Act. 14--15.
Claims 21, 22, and 24 are rejected under 35 U.S.C. § 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.
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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. § 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. § 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 § 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.
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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).
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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.
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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.
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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).
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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. § 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).
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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 § 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. § 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.
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Application 13/783,619
Appellant also contends "the combination fails to provide an enabling
disclosure for the proposed modification." Appeal Br. 19.
ISSUE
Under§ 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
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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
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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. § 112(a) or§ 112, first paragraph (pre-AIA).
We affirm the Examiner's rejection of claims 14, 18, and 20 under 3 5
U.S.C. § 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. § 103(a).
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 )(iv).
AFFIRMED
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