Facebook, Inc.

Patent Trials and Appeals Board

Jun 22, 2021

2020002098 (P.T.A.B. Jun. 22, 2021)

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.
15/618,898 06/09/2017 William S. Bailey 079894.4581 7981
91230 7590 06/22/2021
BAKER BOTTS L.L.P./FACEBOOK INC.
2001 ROSS AVENUE
SUITE 900
DALLAS, TX 75201
EXAMINER
SUN, HAI TAO
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
06/22/2021 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):
Cal-PTOmail@bakerbotts.com
ptomail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM S. BAILEY, FICUS KIRKPATRICK,
HOUMAN MESHKIN, RYAN KEENAN OLSON, and
HERMES GERMI PIQUE CORCHS
Appeal 2020-002098
Application 15/618,898
Technology Center 2600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
MATTHEW J. McNEILL, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Non-Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies the real party in interest as Facebook,
Inc. Appeal Br. 3.
Appeal 2020-002098
Application 15/618,898
2
CLAIMED SUBJECT MATTER
The claims are directed to a systems and methods for occluding
images and videos subject to augmented-reality effects. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1. A method, comprising:
by a computing system, accessing a first image and an
overlay image, wherein the overlay image comprises opaque
pixels, wherein the first image comprises a covered portion
and an uncovered portion, wherein the covered portion is
configured to be covered by the opaque pixels of the overlay
image;
by the computing system, generating a data structure
comprising data elements associated with pixels of the first
image, wherein each of the data elements associated with a
covered pixel in the covered portion of the first image is
configured to identify an uncovered pixel in the uncovered
portion of the first image that is closest to the covered pixel;
by the computing system, modifying each covered pixel
in the covered portion of the first image by:
accessing the data element associated with the covered
pixel;
determining a spatial distance between the covered
pixel of the first image and an associated neighboring
uncovered pixel of the first image using the accessed data
element; and
modifying a color of the covered pixel to a color of the
neighboring uncovered pixel when the spatial distance
satisfies at least a predetermined criterion.
Appeal Br. 12 (emphasis added.)

Appeal 2020-002098
Application 15/618,898
3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Heirich US 6,516,032 B1 Feb. 4, 2003
Andrews US 2005/0057574 A1 Mar. 17, 2005
Soroushi US 2005/0206652 A1 Sept. 22, 2005
Chien US 2007/0058864 A1 Mar. 15, 2007
Guzman Suarez
(“Guzman”)
US 2012/0092438 A1 Apr. 19, 2012

REJECTIONS2
Claims 1, 3, 5, 6, 12–14, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Soroushi, Heirich, and Andrews. Non-
Final Act. 7.
Claims 2, 7–11, and 15 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Soroushi, Heirich, Andrews, and Guzman. Non-Final
Act. 17.
Claims 4, 16, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Soroushi, Heirich, Andrews, and Chien. Non-Final Act.
24.

OPINION
35 U.S.C. § 103
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)

2 The Examiner withdrew the rejection under 35 U.S.C. § 112(a). Ans. 22.
Appeal 2020-002098
Application 15/618,898
4
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”) (cited with approval in In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
or argument shift to the appellant. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
Obviousness is determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445;
Piasecki, 745 F.2d at 1472. Upon review of the evidence and each of the
respective positions set forth in the record, we find that the preponderance of
evidence supports Appellant’s position in the record. Accordingly, we
reverse the Examiner’s rejection on appeal essentially for the reasons set
forth in the record by Appellant, with the following emphasis.
Appellant argues claims 1–20 as a group. Appeal Br. 6–7. We select
claim 1 to be illustrative of the group. See 37 C.F.R. § 41.37(c)(1)(iv).
Independent claims 14 and 18 contain similar limitations.
At issue is whether Soroushi in view of Heirich and Andrews teaches
the last limitation of claim 1:
modifying a color of the covered pixel to a color of the
neighboring uncovered pixel when the spatial distance
satisfies at least a predetermined criterion.

Appeal Br. 7 (emphasis added.)

“Both anticipation under § 102 and obviousness under § 103 are two-
step inquiries. The first step in both analyses is a proper construction of the
Appeal 2020-002098
Application 15/618,898
5
claims . . . . The second step in the analyses requires a comparison of the
properly construed claim to the prior art.” Medichem, S.A. v. Rolabo, S.L.,
353 F.3d 928, 933 (Fed. Cir. 2003) (internal citations omitted).
Construction of the last limitation in claim 1 requires consideration of
preceding claim limitations. At the very least, this is due to antecedent
basis. The last limitation recites “the covered pixel,” “the neighboring
uncovered pixel” and “the spatial distance.” Both of these pixels and the
distance are referring to earlier claim limitations that must not be ignored.
Before the last limitation, claim 1 recites:
a first image and an overlay image . . . the first image
comprises a covered portion and an uncovered portion,
wherein the covered portion is configured to be covered by
the opaque pixels of the overlay image.

(Emphasis added.)
Therefore, “the covered portion” of the first image is “covered by the
opaque pixels of the overlay image.”
Before the last limitation, claim 1 also recites:
a covered pixel in the covered portion of the first image . . .
an uncovered pixel in the uncovered portion of the first
image . . . a spatial distance between the covered pixel of the
first image and an . . . uncovered pixel of the first image.

(Emphasis added.)

Therefore, “the covered pixel” and “the neighboring uncovered pixel”
of the last limitation are both of the same “first image.” Further, “the spatial
distance” of the last limitation is between these two pixels of “the first
image.”
Appeal 2020-002098
Application 15/618,898
6
Thus, the last limitation is construed to be “modifying a color of the
covered pixel” of the first image that is covered by the overlay image “to a
color of the neighboring uncovered pixel” of the first image “when the
spatial distance” of the first image “satisfies at least a predetermined
criterion.”
Appellant’s arguments are persuasive because they are premised on
proper claim construction. Appellant correctly contends that “Heirich and
Andrews are distinguishable because the z values described in Heirich and
Andrews are not a measure of spatial distances between pixels on a single
image (e.g., the first image described by independent Claim 1).” Appeal Br.
8. Appellant also persuasivelycontends that “[n]either Heirich nor Andrews
describes measuring a spatial distance between pixels on the same image.”
Appeal Br. 8. Appellant succinctly emphasizes that “Independent Claim 1
does not describe comparing a pixel of an image (e.g., first image) to a pixel
of another overlapping image (e.g., overlay image).” Appeal Br. 9.
The Examiner’s Answer does not specifically address these arguments
raised in the Appeal Brief. Instead, the Examiner’s Answer reiterates that
the combination of Soroushi in view of Heirich and Andrews teaches claim
1. Ans. 23–27; Non-Final Act. 2–5. The “Response to Argument” section
in the Examiner’s Answer is nearly identical to the corresponding section in
the Non-Final Rejection. Ans. 23–27; Non-Final Act. 2–5. By not
addressing all arguments raised by Appellant, the Examiner misses an
opportunity to show claim construction that supports the underlying factual
findings and conclusion of obviousness. Nevertheless, our review of the
Examiner’s rejection and claim construction does not fully support the
conclusion of obviousness.
Appeal 2020-002098
Application 15/618,898
7
The Examiner finds that Soroushi does not teach the last limitation of
claim 1 and relies on Heirich and Andrews for this teaching. Ans. 5–7, 24–
27.
In relying on Heirich and Andrews, the Examiner finds that the z-
value distance is “the spatial distance.” Ans. 24–25. Since this finding of
distance is in the z-axis direction, it is for a distance between an underlying
image and an overlay image. Such a finding conflicts with a proper claim
construction, discussed above, and Appellant’s assertion that “the spatial
distance” is between two pixels in the same image. Appeal Br. 8.
In relying on Andrews, the Examiner finds that “a pixel and a closest
pixel are in same three[-]dimensional image.” Ans. 24. In doing so, the
Examiner correlates a three-dimensional image, that includes an underlying
image and an overlay image, to “the first image.” Ans. 24. The Examiner
does not fully explain this mapping.
Claim 1 requires an “overlay image,” distinct from “the first image,”
that covers a “pixel of the first image.” If the covered and uncovered pixels
are in the same z-axis direction of a three-dimensional image in one 3D
“first image,” as alleged by the Examiner, they would appear to be as one
pixel on top of the other in the 3D image, with “the spatial distance”
calculated along the z-axis.
The Examiner not shown an “overlay image” that is distinct from the
3D “first image” and correlated spatial distance within the 3D “first image.”
Furthermore, the Examiner has not shown how an overlay results in an
“uncovered pixel of the first image” and a “covered pixel” of the 3D image,
especially as it appears to be alleged by Examiner that all three are along one
z-axis. Having two pixels in one z-axis direction and an overlay further
along the same z-axis direction would seemingly result in both pixels being
Appeal 2020-002098
Application 15/618,898
8
covered or uncovered, not one covered and one uncovered. Furthermore, the
Examiner has not explained how the elements of claim 1 as a whole are fully
taught or suggested by the combination of Soroushi in view of Heirich and
Andrews.
As a result, we find that the Examiner has not made adequate factual
findings for every claim element to support the ultimate conclusion of
obviousness of independent claim 1, and similar deficiencies in the
rejections of claims 14 and 18 as well as their respective dependent claims
2–13, 15–17, 19, and 20.

CONCLUSION
We REVERSE the Examiner’s decision rejecting claims 1–20 under
35 U.S.C. § 103.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 6,
12–14, 17,
18, 20
103 Soroushi, Heirich,
Andrews
1, 3, 5, 6,
12–14, 17,
18, 20
2, 7–11, 15 103 Soroushi, Heirich,
Andrews, Guzman
2, 7–11, 15
4, 16, 19 103 Soroushi, Heirich,
Andrews, Chien
4, 16, 19
Overall
Outcome
1–20

REVERSED