Ex Parte Robbins et al

Patent Trial and Appeal Board

May 18, 2018

13927025 (P.T.A.B. May. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/927,025 06/25/2013
69316 7590 05/22/2018
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
FIRST NAMED INVENTOR
Steve Robbins
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.
338957.01 4633
EXAMINER
SUH, JOSEPH JINWOO
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
05/22/2018 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):
usdocket@microsoft.com
chriochs@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVE ROBBINS, SCOTT MCELDOWNEY,
XINYE LOU, DAVID NISTER, DREW STEEDL Y,
QUENTIN SIMON CHARLES MILLER, DAVID D. BOHN,
JAMES PEELE TERRELL JR., ANDREW C. GORIS, and
NATHAN ACKERMAN 1
Appeal2017-011660
Application 13/927 ,025
Technology Center 2400
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA II, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-5 and 7-20, 2 which are all of the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, Microsoft Technology Licensing, LLC, which,
according to the Appeal Brief, is the real party in interest. See App. Br. 3.
2 The Examiner has stated that claim 6 would be allowable if rewritten in
independent form. Final Act. 28. We note, however, the Examiner has
rejected claim 6 for obviousness-type double patenting (Final Act. 29-31 ).
Appeal2017-011660
Application 13/927,025
STATEMENT OF THE CASE
According to Appellant, the claims are directed to a see-through head-
mounted display system which includes gaze-detection; the system provides
display and gaze-detection using a prism to emit and receive light. Spec.
i-f 2, Abstract. 3 Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A see-through head-mounted display system comprising:
an illumination prism including a display-facing side, an
eye-facing side, a camera-facing side between the display-facing
side and the eye-facing side, and an interior beam splitter;
a freeform prism;
a display device configured to emit display light toward
the display-facing side of the illumination prism and through the
freeform prism to an eye of a user, the illumination prism
positioned to receive the display light from the display device at
the display-facing side and to transmit the display light from the
display device through the beam splitter and the eye-facing side
to the freeform prism; and
an imaging device configured to receive gaze-detection
light reflected from the eye and directed through the freeform
prism and the illumination prism, the illumination prism
positioned to receive, at the eye-facing side, the gaze-detection
light as reflected from the eye and to reflect the gaze-detection
light at the beam splitter through the camera-facing side to the
imaging device, the illumination prism positioned optically
intermediate the display device and the freeform prism, optically
intermediate the imaging device and the freeform prism, and
optically separated from the freeform prism.
3 This Decision refers to: (1) Appellant's Specification filed June 25, 2013
(Spec.); (2) the Final Office Action (Final Act.) mailed November 28, 2016;
(3) the Appeal Brief (App. Br.) filed April 28, 2017; (4) the Examiner's
Answer (Ans.) mailed July 20, 2017; and (5) the Reply Brief (Reply Br.)
filed September 19, 2017.
2
Appeal2017-011660
Application 13/927,025
REFERENCES AND REJECTIONS
Claims 1-20 stand provisionally rejected for obviousness-type double
patenting based on the claims of U.S. Patent Application No. 13/926,968.
Final Act. (29-43).
Claims 1, 2, 10, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inoguchi (US 2002/0034016 Al; published Mar. 21,
2002) and Mihashi (US 2006/0215111 Al; published Sept. 28, 2006). Final
Act. 3-7.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Mihashi, and Lu (US 2005/0122464 Al;
published June 9, 2005). Id. at 8-9.
Claims 4, 5, 7, and 14--19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Inoguchi, Mihashi, and Gustafsson (US
2008/0024392 Al; published Jan. 31, 2008). Id. at 9-15, 19-25.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Mihashi, and Staveley (EP 0 408 344 A3;
published Jan. 16, 1991). Id. at 16-17.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Mihashi, Staveley, and Steinle (US 5,044,727;
issued Sept. 3, 1991). Id. at 17-18.
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Mihashi, and Russo (US 4,731,462; issued Mar.
15, 1988). Id. at 18-19.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Inoguchi, Mihashi, and Hua (US 2014/0361957 Al;
published Dec. 11, 2014). Id. at 25-26.
3
Appeal2017-011660
Application 13/927,025
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(l).
ANALYSIS
Obviousness-type Double Patenting
In the Final Action, the Examiner provisionally rejected claim 1 for
obviousness-type double patenting based on the claims of U.S. Patent
Application No. 13/926,968 ("the '968 application") (Final Act. 29--31) and
claims 2-20 for obviousness-type double patenting based on the claims of
the '968 application and Inoguchi (Final Act. 32--43). The '968 application
has since issued as US 9,625,723 B2. Because the scope of the claims in the
issued patent may be different from the claims in the application used in the
provisional obviousness-type double patenting rejection, we decline to reach
the merits of the rejection. Should Appellant choose to continue
prosecution, we leave it to the Examiner to determine the propriety of the
rejection. ExparteJerg, 2012 WL 1375142, *3 (BPAI 2012) (informative)
("Panels have the flexibility to reach or not reach provisional obviousness-
type double-patenting rejections.").
35 USC§ 103(a)
Appellant contends the Examiner erred in finding the combination of
Inoguchi and Mihashi teaches "an illumination prism including a display-
facing side, an eye-facing side, [and] a camera-facing side between the
display-facing side and the eye-facing side," as recited in claim 1. See App.
Br. 14--19; see also Reply Br. 2---6. Specifically, Appellant argues, in
combining Inoguchi and Mihashi, "either the display functionality or the
4
Appeal2017-011660
Application 13/927,025
eye-tracking functionality (or both) would be destroyed," and, therefore, the
combination "would no longer include an illumination prism having a
display-facing side" or "a camera-facing side." App. Br. 17; see App.
Br. 18-19; see also Reply Br. 4---6.
We are not persuaded. The Examiner finds, and we agree, Inoguchi
teaches "an illumination prism including a display-facing side [and] an eye-
facing side." Final Act. 3--4. In particular, Inoguchi's "illumination system"
includes "prism 73" with "display device 51" positioned at one side of prism
73, i.e., "a display-facing side," and an observer's eye positioned at the
opposite side of prism 73, i.e., "an eye-facing side." Inoguchi Fig. 3, i-f 11.
Figure 3 of Inoguchi is reproduced below:
72 ;
.... /.. ~ ..... , ..... ,
~1 ·'>··· .... ,, ." ,/ '",_::-"<.:.··., ... 51
I . •,~,:·""-?n'., l' / / ,, '1
'<:·/;J '-. '· '/· ';~--l<"/)'<
i ...- i .. -.i ... ":~·r' 73
A 'tii~lJ ,, ,,
,... " ...... z / I ~·iv
\!·'._ ./ -........,,/ . ":i.. l ... , I 1' / ........ ' .... j
f'-., / i..~ I .. ::,~ ..... /.< "'\.. __ .53
v· / '"·· (" c2
-_ Jf