12287315 (P.T.A.B. Feb. 24, 2016)

Ex Parte Wegbreit et al

Patent Trial and Appeal BoardFeb 24, 2016

12287315 (P.T.A.B. Feb. 24, 2016)

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. 12/287,315 10/08/2008 Eliot Leonard Wegbreit PA1006US 8159 80641 7590 02/24/2016 Gard and Kaslow LLP 4 Main Street, Suite 120 Los Altos, CA 94022 EXAMINER WERNER, BRIAN P ART UNIT PAPER NUMBER 2665 MAIL DATE DELIVERY MODE 02/24/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ELIOT LEONARD WEGBREIT and GREGORY D. HAGER ____________________ Appeal 2014-002451 Application 12/287,315 Technology Center 2600 ____________________ Before CARL W. WHITEHEAD JR., HUNG H. BUI, and AMBER L. HAGY, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 1–19, 23, and 34–35,2 which are all the claims pending in this appeal. Claims 20–22 and 24–33 have been withdrawn due a Restriction Requirement. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.3 Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection for claims 1–19, 23, and 34– 35. 1 According to Appellants, the real party of interest is Strider Labs, Inc. 2 Claims 2–12, 14, 17, and 19 have been conditionally allowed if rewritten in independent form including all limitations of base claim 1 and any intervening claims. Final Act. 13. 3 Our Decision refers to Appellants’ Reply Brief filed December 06, 2013 (“R. Br.”) and Appeal Brief filed August 29, 2013, 2010 (“App. Br.”); Appeal 2014-002451 Application 12/287,315 2 STATEMENT OF THE CASE Appellants’ Invention Appellants’ invention relates to modification of a 3D scene model. Spec. 3:9. Claims 1, 23, 34, and 35 are independent. Claim 1 is illustrative of Appellants’ invention, as reproduced below: 1. A method for computing a 3D scene model comprising 3D objects and representing a scene, based upon a prior 3D scene model, the method comprising the steps of: (a) acquiring an image of the scene; (b) initializing the 3D scene model to the prior 3D scene model; and (c) modifying the 3D scene model to be consistent with the image, by: (i) comparing data of the image with objects of the 3D scene model, resulting in associated data and unassociated data; (ii) using the unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model; and (iii) using the associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model. App. Br. 11 (Claims Appx.) (disputed limitations in italics). Evidence Considered Sawhney US 6,985,620 Jan. 10, 2006 Marzell US 2007/0065002 Mar. 22, 2007 Examiner’s Answer mailed October 08, 2013 (“Ans.”); Final Office Action mailed February 04, 2013 (“Final Rej.”); and the original Specification filed October 08, 2008 (“Spec.”). Appeal 2014-002451 Application 12/287,315 3 Examiner’s Rejections (1) Claims 1, 13, 16, 23, and 34 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sawhney. Final Act. 2–7. (2) Claims 1, 13, 15, 18, 23, and 34–35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Marzell and Sawhney. Final Act. 8–13. Issue on Appeal Based on Appellants’ arguments, the dispositive issue on appeal is whether the cited prior art discloses all limitations of Appellants’ independent claims 1, 23, 34, and 35. App. Br. 12–29; Reply Br. 5–27. ANALYSIS § 102(b) Rejection of Claims 1, 13, 16, 23, and 34 based on Sawhney In support of the anticipation rejection of claims 1, 23, and 34, the Examiner finds Sawhney discloses a computer software implemented method for computing a 3D scene model comprising 3D objects and representing a scene, based upon a prior 3D scene model, shown in Figure 7 or Figure 9, including the disputed limitations: “(i) comparing data of the image with objects of the 3D scene model, resulting in associated data and unassociated data; (ii) using the unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model; and (iii) using the associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model.” Appeal 2014-002451 Application 12/287,315 4 Final Act. 3 (citing Sawhney 10:20–30, 11:35–50, Figs. 5, 7) (emphasis added). Appellants acknowledge Sawhney teaches 3D modeling of an image (scene), including updating and refining such a 3D modeling, but argue: (1) the cited portions of Sawhney only discuss improving the position estimate of an object that is already within the 3D model; and (2) Sawhney does not teach any technique for updating the 3D model by adding or deleting objects from the 3D model, as recited in claims 1, 23, and 34. App. Br. 13–28; Reply Br. 5–27. According to Appellants, Sawhney’s 3D model updates include: (1) updating the position of objects in the 3D model and (2) refining shape/color of objects in the 3D model by projecting image data onto the 3D model to refine surface details. Reply Br. 10–12. In addition, Appellants argue Sawhney also fails to teach the creation and use of “associated data” and “unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene mode” as recited in claims 1, 23, and 34. App. Br. 28–29. In response, the Examiner takes the position that: (1) adding scene objects to the 3D model and deleting scene objects from the 3D model are part of the refinement process as described by Sawhney; and (2) Sawhney discloses “unassociated” objects by virtue of an object existing within a current scene, and not in the model. Ans. 6–15 (citing Sawhney 11:35–47). We do not agree with the Examiner. As recognized by Appellants, adding scene objects to the 3D model and deleting scene objects from the 3D model can be part of the refinement process as described by Sawhney. Ans. 7–8. However, such a disclosure is insufficient to support the Examiner’s findings regarding Sawhney, i.e., Sawhney teaches the distinction between Appeal 2014-002451 Application 12/287,315 5 “associated data” and “unassociated data” produced as a result of comparison between the captured image and objects of the 3D scene model, and then “using the unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model” and “using the associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model” as recited in claims 1, 23, and 34. Because the Examiner’s factual findings regarding Sawhney are not supported by evidence, we do not sustain the Examiner’s anticipation rejection of claims 1, 23, and 34 and dependent claims 13 and 16 based on Sawhney. § 103(a) Rejection of Claims 1, 13, 15, 18, 23, and 34–35 based on Marzell and Sawhney In support of the obviousness rejection of claims 1, 23, 34, and 35, the Examiner finds: (1) Marzell, instead of Sawhney, discloses the same disputed limitations as discussed supra; and (2) Sawhney further teaches adding and/or deleing objects from a 3D model in order to support the conclusion of obviousness. Final Act. 8–11 (citing Marzel ¶¶ 53, 54, 57, 67, 70, 71; Sawhney 11:35–50). Again, we do not agree with the Examiner. Neither Marzel nor Sawhney teaches or suggests the distinction between “associated data” and “unassociated data” produced as a result of comparison between the captured image and objects of the 3D scene model, and then “using the unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model” and “using the Appeal 2014-002451 Application 12/287,315 6 associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model” as recited in claims 1, 23, 34, and 35. Because Marzell and Sawhney fail to teach or suggest each and every feature of Appellants’ independent claims 1, 23, 34, and 35, particularly the disputed limitations discussed supra, we do not sustain the Examiner’s obviousness rejection of these claims, as well as dependent claims 13, 15, 16, and 18. NEW GROUNDS OF REJECTION Pursuant to our authority under 37 C.F.R. § 41.50(b), however, we reject independent claims 1, 23, 34, and 35 and dependent claims 2–19 under 35 U.S.C. § 101 as directed to non-statutory subject matter for the following reasons. The Supreme Court has long held that “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) (internal quotation marks omitted)). The “abstract ideas” category embodies the longstanding rule that an idea, by itself, is not patentable. Alice Corp., 134 S. Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972). In Alice, the Supreme Court sets forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas [or mental processes4] from those that claim patent-eligible 4 See Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts Appeal 2014-002451 Application 12/287,315 7 applications of those concepts.” Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296–97 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’—i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself’”. Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant post-solution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation omitted). In applying the framework set out in Alice, and as the first step of the analysis, we find Appellants’ claims 1, 23, 34, and 35 are directed to a patent-ineligible abstract concept of 3D modeling of an image involving making modification of a 3D scene model based on an image obtained from a scene. All the steps of Appellants’ claims 1, 23, 34, and 35, including, for example: “(i) comparing data of the image with objects of the 3D scene model, resulting in associated data and unassociated data;” “(ii) using the are not patentable, as they are the basic tools of scientific and technological work.”). (Emphasis added). Appeal 2014-002451 Application 12/287,315 8 unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model;” and “(iii) using the associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model” are 3D abstractions of an image or an abstract concept that could be performed in the human mind, or by a human using a pen and paper. CyberSource Corp. 654 F.3d at 1372. “[M]ental processes–or processes of human thinking– standing alone are not patentable even if they have practical application.” In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009); see also Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature . . . , mental processes, and abstract intellectual concepts are not patentable, as they are basic tools of scientific and technological work.” (emphasis added)). For the second step of the Alice analysis, we find Appellants’ claims 1, 23, 34, and 35 do not have any additional limitations that represent a patent-eligible application of the abstract concept. Alice, 134 S. Ct. at 2357. As recognized by the Federal Circuit in Ultramercial Inc. v. Hulu, LLC, 772 F.3d 709, 714 (Fed. Cir. 2014) (quoting Bilski v. Kappos, 561 U.S. at 594), the “machine-or-transformation” test can provide a “‘useful clue’ in the second step of the Alice framework.” However, neither of Appellants’ process claims 1, 23, 34, and 35 is tied to any machine; nor any of the recited steps of Appellants’ claims 1, 23, 34, and 35 transforms “a particular article into a different state or thing.” In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff’d, Bilski v. Kappos, 561 U.S. 593 (2010). According to In re Bilski, the transformation (1) must involve an underlying article from one state to a different state or thing, and (2) must be central to the purpose of Appellants’ claimed process. Id. While an underlying article can be Appeal 2014-002451 Application 12/287,315 9 intangible, such as electrical signals, and transformation can include data transformation, data must represent a physical object or an article. See Arrhythmia Research Tech., Inc. v. Corazoxic Corp., 958 F.2d 1053, 1059 (Fed. Cir. 1992); In re Abele, 684 F.2d 902, 905–06 (CCPA 1982). In this case, we find Appellants’ claims 1, 23, 34, and 35 are neither “tied to a particular machine or apparatus” nor do they “transform a particular article into a different state or thing” as required by In re Bilski. In particular, we note that none of recited steps in Appellants’ independent claims 1, 23, 34, and 35 refers to a specific machine by reciting structural limitations of any apparatus or to any specific operations that would cause a machine to be the mechanism to perform these steps. Because Appellants’ process claims 1, 23, 34, and 35 are directed to no more than a patent-ineligible abstract concept, we issue a new ground of rejection of independent claims 1, 23, 34, and 35 and dependent claims 2–19 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. DECISION On the record before us, we conclude Appellants have demonstrated the Examiner erred in rejecting: (1) claims 1, 13, 16, 23, and 34 under 35 U.S.C. § 102(b) as being anticipated by Sawhney; and (2) claims 1, 13, 15, 18, 23, and 34–35 under 35 U.S.C. § 103(a) as being unpatentable over Marzell and Sawhney. As such, we REVERSE the Examiner’s final rejection of claims 1, 13, 15, 16, 18, 23, and 34–35 under 35 U.S.C. § 102(b) and § 103(a). However, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND of rejection for all claims 1–19, 23, Appeal 2014-002451 Application 12/287,315 10 and 34–35 as pending on appeal under 35 U.S.C. § 101 as being directed to non-statutory subject matter. Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new [e]vidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner . . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record . . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)