Ex Parte Shoemaker et alDownload PDFPatent Trial and Appeal BoardFeb 23, 201612489368 (P.T.A.B. Feb. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/489,368 0612212009 23446 7590 02/25/2016 MCANDREWS HELD & MALLOY, LTD 500 WEST MADISON STREET SUITE 3400 CHICAGO, IL 60661 FIRST NAMED INVENTOR Garth B. D. Shoemaker 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. 23621US03 1488 EXAMINER HARRISON, CHANTE E ART UNIT PAPER NUMBER 2619 NOTIFICATION DATE DELIVERY MODE 02/25/2016 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): mhmpto@mcandrews-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARTH B. D. SHOEMAKER, MARK H. A TIGGES, DAVID J.P. BAAR, MICHAEL DOYLE, ZEENAT JETHA, and STACY GORKOFF Appeal2014-003466 Application 12/489,368 Technology Center 2600 Before CARLA M. KRIVAK, JON M. JURGOV AN, and NABEEL U. KHAN, Administrative Patent Judges. JURGOV AN, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 filed this appeal under 35 U.S.C. § 134(a) from a rejection of claims 1-8, 10, 11, and 13-20.2 We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 3 1 Appellants identify Noregin Assets N.V., LLC, as the real party in interest. 2 Claims 9 and 12 are canceled, and are thus not before us on appeal. 3 Our decision refers to the Specification filed June 22, 2009 ("Spec."); the Final Office Action mailed July 15, 2013 ("Final Act."); the Appeal Brief filed Nov. 13, 2013 ("App. Br."); the Examiner's Answer mailed Dec. 9, 2013 ("Ans."); and the Reply Brief filed Jan. 28, 2014 ("Reply Br."). Appeal2014-003466 Application 12/489,368 STATEMENT OF THE CASE The claims are directed to rendering a display having a different number of level images depending upon whether the lens is stationary or is in transit between first and second locations of a region-of-interest on an original image. (Spec. Abstract). The lens has a focal region for the region- of-interest at least partially surrounded by a shoulder region defined by level images. (Id.). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method comprising: establishing a lens having a focal region for a region-of- interest in an original image for display on a display screen of a client, the region-of-interest at least partially surrounded by a shoulder region; if the lens is in transit between first and second locations for the region-of-interest in the original image, rendering the lens with a first number of level images for display on the display screen of the client; and if the lens is stationary in the original image, rendering the lens with a second number of level images for display on the display screen of the client, wherein the second number of level images is greater than the first number of level images. REJECTIONS RI. Claims 1-8, 10, 11, and 13-20 stand rejected under 35 U.S.C. § 102(e) based on Shoemaker [I] (US 2012/0007889 Al, published Jan. 12, 2012). (Final Act. 3-8). 2 Appeal2014-003466 Application 12/489,368 R2. Claims 1---6, 8, 10, 11, 13-16, and 18-20 stand rejected under 35 U.S.C. § 103(a) based on Baar et al. (US 2006/0214951 Al, published Sept. 28, 2006) and Jouppi (US 6,549,215 B2, published Apr. 15, 2003). (Final Act. 8-13). R3. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) based on Baar, Jouppi, and Shoemaker et al. [II] (US 2007/0064018 Al, published Mar. 22, 2007). (Final Act. 14). ANALYSIS Rejection RI -102(e)- Claims 1-8, 10, 11, and 13-20 Appellants argue, in order to anticipate claim 1, Shoemaker I must disclose: (1) a lens having a focal region at least partially surrounded by a shoulder region; (2) a lens that is rendered with a number of level images; (3) the number of level images used to render the lens varies depending on whether the lens is in transit (less level images) or stationary (more level images). (App. Br. 8). These features are explained in further detail with reference to Figures 6 and 7 of the Specification (see below), which show a lens 610 with focal region 620 and a shoulder region 630. The focal region 620 is rendered by a single image level, and the shoulder region 630 is rendered by one or more intermediate image levels at least partially surrounding the focal region. Relevant to interpretation of the claimed language, Appellants indicate there cannot be zero intermediate level images, because the recited "shoulder region" would cease to exist. (App. Br. 9). Appellants further indicate there 3 Appeal2014-003466 Application 12/489,368 will always be at least two levels - the focal region image and at least one intermediate level image. Id. FIG.6 FIG. 7 Figures 6 and 7 of Appellants' Specification show a top view and side view, respectively, of a pyramid lens (annotations in red). We agree with Appellants' argument that Shoemaker I fails to disclose varying the number of level images based upon whether the lens is in transit or stationary (i.e., argument (3) above). The Examiner cites to a folding technique in Shoemaker I that applies a transform to the focal region or shoulder region, resulting in the lens being coextensive with the focal region. (Shoemaker I i-f 55). Although it may be true that Shoemaker I's folding operation may change portions of the intermediate levels to be coextensive with the focal region, the Examiner has pointed to no disclosure in Shoemaker I that states the number of image levels rendered differs in dependence upon whether the lens is in transit or stationary. 4 Appeal2014-003466 Application I2/489,368 "A rejection for anticipation under section I02 requires that each and every limitation of the claimed invention be disclosed in a single prior art reference." See In re Buszard, 504 F.3d I364, I366 (Fed. Cir. 2007) (quoting In re Paulsen, 30 F.3d I475, I478-79 (Fed. Cir. I994)). The claimed feature of rendering the lens with a number of level images dependent upon whether the lens is in transit (less level images) or stationary (more level images) is not disclosed in the cited sections of Shoemaker I. Thus, we do not sustain Rejection RI. Our decision on this ground is dispositive of the appeal of Rejection RI. Thus, we do not reach Appellants' remaining arguments against Rejection RI. Rejection R2 -103(a)- Claims 1-6, 8, 10, 11, 13-16, and 18-20 According to Appellants, the Examiner acknowledges Baar fails to show "rendering the lens with level images" and for this reason, the Examiner relies on Jouppi. (App. Br. I4-I5). Appellants argue Jouppi merely shows "images with varying resolutions," not "level images" as one of ordinary skill would understand the term in view of Figures 6 and 7 and paragraphs 66 to 70 of the Specification. Id. Appellants' argument fails to persuade us that "level images" are not equivalent to Jouppi's "images of varying resolutions." In the sections cited by Appellants, the Specification provides no definition for what is meant by "level images," and Appellants offer no explanation of what the claimed phrase means (other than to state it does not encompass "images of varying resolutions"). The Specification mentions multiple levels in the context of both detail and resolution (see Spec. i-f 5 I), so it is reasonable the Examiner interprets "level images" to include levels of magnification or resolution. In 5 Appeal2014-003466 Application 12/489,368 addition, the claims do not set forth what is meant by "level images" in a way that would distinguish over Jouppi's "images of varying resolutions." Accordingly, the Examiner reasonably concludes Jouppi teaches the claimed limitation. Appellants state the Examiner's rationale for combining Baar and Jouppi is to provide "the advantage of generating a final display image including a focus regions/lens rendered at one level of resolution surrounded by image portions having different levels of resolution." (App. Br. 15 (citing Final Act. 10)). Appellants argue the Examiner's rationale is conclusory, and provides no explanation either of the pertinence of the references or how one of skill would combine the references with a reasonable expectation of success. Id. We disagree with Appellants' arguments. The Examiner correctly indicates: it is obvious to combine the teachings of Baar and Jouppi because Baar teaches different image regions having different resolutions that are combined to create a final image and Jouppi discloses the image regions that together comprise a final image having different resolutions represent layers/levels of the image. Therefore, the Action identifies the prior art teachings that correspond to the claimed elements as known methods and provides a suggestion of modification of the prior art by combining teachings to yield predictable results as cited by the claimed invention." (Ans. 19). We agree the person of ordinary skill in the art would have combined Baar's regions of different magnification or resolution with Jouppi's different resolution levels to arrive at the claimed invention. Baar' s and Jouppi's teachings are similar, showing lens-like effects with a region of 6 Appeal2014-003466 Application 12/489,368 higher resolution or magnification surrounded by regions having less resolution or magnification. (See, e.g., Jouppi Fig. 8C and Baar Fig. 4). The technique of layering or displaying level images is known in the art, as taught by Baar (e.g., i-f 25). Armed with this knowledge, we agree with the Examiner that one of ordinary skill would have arrived at the claimed invention with a reasonable expectation of success. "[A] court must ask whether the [claimed] improvement is more than the predictable use of prior art elements according to their established functions." KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). In this case, based on the arguments presented, we find the claimed invention is not more than the combination of familiar elements yielding predictable results. (See KSR at 415--416). Appellants further argue the Examiner failed to show all limitations of claim 11 when referencing back to claim 1 in the rejection. As the Examiner noted, Baar teaches "restricted rendering of lens during lens motion" to minimize the "computations required for lens movement and rendering." (Ans. 20-21 (citing inter alia Baar i-f 33)). Thus, the Examiner showed Baar teaches all limitations of claim 11, and we are not persuaded the Examiner erred in the rejection. In order to sustain a rejection on obviousness grounds, "there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). We find the Examiner provides sufficient reasoning and underpinning to demonstrate the combination of Baar and Jouppi teaches or suggests the claimed invention. Accordingly, we sustain Rejection R2. 7 Appeal2014-003466 Application 12/489,368 Rejection R3-103(a)- Claims 7and17 Appellants argue the Examiner provided insufficient rationale to combine Shoemaker II with Baar and Jouppi with a reasonable expectation of success in arriving at the claimed invention. (App. Br. 16, 17). The Examiner states: It would have been obvious to one of skill in the art to include Shoemaker's dis[p]lay of a GUI over the lens on the display screen with the method of Baar because Baar teaches enabling user selection of image data displayed; and the display of interface buttons/operations on the display provides convenience when manipulating displayed data. (Final Act. 14). The Examiner further states: [T]he Action identifies the prior art teachings that correspond to the claimed elements as known methods and provides a suggestion of modification of the prior art by combining teachings to yield predictable results as cited by the claimed invention." (Ans. 20). We agree with the Examiner the person of ordinary skill would have appreciated the desirability of combining Shoemaker II' s lens control elements (see Fig. 4) and the convenience they provide, with similar lens and display teachings of Baar (i-f 33) and Jouppi (Figs. 8A-8C). As the Examiner stated, the combination is nothing more than the addition of familiar elements according to their established functions yielding predictable results. See KSR at 417. Accordingly, we are not persuaded the Examiner erred in the combination. The Examiner noted Baar teaches "restricted rendering of lens during lens motion" to minimize the "computations required for lens movement and 8 Appeal2014-003466 Application 12/489,368 rendering." (Final Act. 12 (citing Baar if 33)). Because Baar teaches restricted rendering of lens during motion, it necessarily teaches "receiving a signal indicating the transit between the first and second locations from a graphical user interface (GUI) displayed over the lens on the display screen of the client" as claimed. Specifically, Baar's "processing system" (i.e., computer) (see Fig. 3, iii! 18, 34) receives an input signal via input device 310 in response to manipulation of lens control elements (See Fig. 4 ). In response to the input signal, the CPU 320 and memory 330 generate signals to change graphics representing the lens on display 340 to reflect that the lens is in transit. Given the nature of how computers operate, restricting rendering of the lens during motion on Baar's display could not occur without receiving a signal from the lens control elements indicating lens movement. Accordingly, the Examiner has provided the necessary reasoning and underpinning to sustain the obviousness rejection. (See KSR at 418). Thus, we are not persuaded the Examiner erred in the obviousness rejection. Appellants remaining arguments were addressed in the rejections previously discussed. DECISION The rejections of claims 1-8, 10, 11, and 13-20 under 35 U.S.C. § 102( e) based on Shoemaker I, are reversed. The rejections of claims 1---6, 8, 10, 11, 13-16, and 18-20 under 35 U.S.C. § 103(a) based on Baar and Jouppi, are affirmed. The rejections of claims 7 and 17 under 35 U.S.C. § 103(a) based on Baar, Jouppi, and Shoemaker II, are affirmed. 9 Appeal2014-003466 Application 12/489,368 AFFIRMED 10 Copy with citationCopy as parenthetical citation