IMMY Inc.

Patent Trials and Appeals Board

Jul 2, 2021

2020002147 (P.T.A.B. Jul. 2, 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.
14/214,346 03/14/2014 Douglas Peter Magyari I1442.102.105 9048
25281 7590 07/02/2021
DICKE, BILLIG & CZAJA
FIFTH STREET TOWERS
100 SOUTH FIFTH STREET, SUITE 2250
MINNEAPOLIS, MN 55402
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
DBCLAW-Docket@dbclaw.com
USPTO.PATENTS@dbclaw.com
dmorris@dbclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS PETER MAGYARI
Appeal 2020-002147
Application 14/214,346
Technology Center 2600
Before JASON V. MORGAN, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–10, 12, 13 and 15–21. See Final Act.

1 We refer to the Specification, filed March 14, 2014 as amended June 15,
2015 and September 28, 2015 (“Spec.”); Final Office Action, mailed
November 29, 2018 (“Final Act.”); Appeal Brief, filed July 29, 2019
(“Appeal Br.”); Examiner’s Answer, mailed November 18, 2019 (“Ans.”);
and Reply Brief, filed January 21, 2020(“Reply Br.”).
2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as IMMY INC. Appeal Br. 3.
Appeal 2020-002147
Application 14/214,346
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1. Claims 11 and 14 are canceled. Appeal Br. 15 (Claims App.) We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a head mounted display assembly with a
structural frame and an outer frame. Spec., Title. Claim 1, reproduced
below with labels added for ease of reference, formatting altered, and a
disputed limitation emphasized in italics, is illustrative of the claimed
subject matter:
1. A method for assembling a head mounted display in a
manufacturing process, comprising:
[(i)] providing a rigid structural frame;
[(ii)] forming an inner optical assembly by assembling optical
components to the structural frame including at least one micro-
display configured to generate an image, and at least one
reflective optical component configured to direct the image to a
user’s eye,
[(iii)] wherein the rigid structural frame defines one or more
first datums and one or more second datums,
[(iv)] wherein assembling the optical components to the rigid
structural frame includes:
[(a)] engaging portions of the at least one reflective
optical component to the one or more first datums in order
to facilitate accurate and dimensionally stable optical
alignment of the at least one reflective optical component;
and
[(b)] engaging portions of the at least one micro-
display to the one or more second datums in order to
facilitate accurate and dimensionally stable optical
alignment of the at least one micro-display; and
[(v)(a)] assembling an outer frame to the inner optical
assembly to provide protection for the optical components and
customization of the head-mounted display for the user, the outer
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Application 14/214,346
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frame separate from the rigid structural frame, [(v)(b)] the
structural frame has a higher elastic modulus than the outer
frame sufficient to maintain the accurate and dimensionally
stable optical alignment of the at least one reflective optical
component and the at least one micro­display, [(v)(c)] the
assembling including receiving the structural frame into the outer
frame and non-adjustably securing the outer frame to the
structural frame.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nanba US 5,663,833 Sept. 2, 1997
Mizoguchi US 6,084,555 July 4, 2000
Buchon US 2009/0268287 A1 Oct. 29, 2009
Magyari3 WO 2011/062591 A1 May 26, 2011

REJECTIONS
The Examiner rejects claims 1–5, 8–10, 12, 13, 15–17, and 21 under
35 U.S.C. § 103(a) as obvious over the combined teachings of Mizoguchi,
Buchon, and Magyari. Final Act. 3–17.
The Examiner rejects claims 6, 7, and 18–20 under 35 U.S.C. § 103(a)
as obvious over the combined teachings of Mizoguchi, Buchon, Magyari,
and Nanba. Final Act. 17–21.

3 Magyari, WO 2011/062591 (PCT application PCT/US2009/065420), and
its corresponding national phase U.S. application 13/510,423 (US 9,250,444
issued Feb. 2, 2016) are earlier applications by Douglas Peter Magyari, who
is named as the inventor in the application now on appeal.
Appeal 2020-002147
Application 14/214,346
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STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
OPINION
We have considered in this Decision only those arguments Appellant
actually raised in the Briefs. Arguments not made are forfeited. See 37
C.F.R. § 41.37(c)(1)(iv) (2018).
Examiner’s Findings and Appellant’s Contentions of Error
The Examiner finds Mizoguchi’s spectacle type display device
includes (a) image generating arrangement 2 teaching a rigid structural
frame (claim element (i)) (Final Act. 3 citing Mizoguchi Fig. 1, col. 5, ll.
38–47); and (b) image generating unit 20 teaching the inner optical assembly
(claim element (ii)) (id. citing Mizoguchi Figs. 1, 3, col. 5, ll. 38–47, col. 6,
l. 46 – col. 7, l. 4, col. 10, l. 58 – col. 11, l.12). The Examiner further finds
Mizoguchi’s description of the arrangement of frame and optical
components teaches the assembly steps of claim elements (v)(a) and (v)(c).
Id. (citing Mizoguchi Figs. 1, 3, col. 5, ll. 47–56, col. 6, l. 46 – col. 7, l. 4).
The Examiner finds the datums of claim elements (iii) through (iv) are
taught by Buchon’s binocular display device’s (a) ribs 14AN1, 14AN2
which position light guides 5A, 5B (first datum) and (b) a ridge portion of
Buchon’s connector C which holds miniature display screen E1 in place
(second datum). Id. at 4 (citing Buchon Figs. 1, 2, ¶¶ 26, 43, 52).
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In connection with disputed claim element (v)(b), the Examiner finds
Magyari’s head mounted display device includes frame 10 that corresponds
to the recited outer frame and primary transmission housing 40 that
corresponds to the recited structural frame of claim 1. Id. at 5 (citing
Magyari Figs. 2, 3, ¶¶ 30, 38). The Examiner finds Magyari’s disclosure of
materials from which frame 10 and housing 40 can be manufactured teaches
the recited elastic modulus relationship, as follows:
Magyari et al. teaches the structural frame (Figure 2, Element 40.
Paragraph 38) has a higher elastic modulus (Paragraphs 30 and
38. Magyari et al. discloses that the primary transmission
housing (Element 40) is comprised of a light weight material
such as a magnesium alloy. Magyari et al. further discloses that
the frame (Element 10) can be made by a durable lightweight
material such as PVC. A magnesium alloy will have a higher
elastic modulus than [a] PVC . . . outer frame (Figure 2, Element
10[,] Paragraph 30) sufficient to maintain the accurate and
dimensionally stable optical alignment of the at least one
reflective optical component (Figures 2 and 3, Element 30.
Paragraph 31) and the at least one micro-display (Figure 3,
Element 20. Paragraph 35).
Id. at 6.
Appellant contends the rejection is improper, arguing the prior art
fails to teach the recited elastic modulus relationship of the structural and
outer frames. Appeal Br. 10–11. In particular, Appellant argues as follows:
Magyari . . . discloses the exact same example materials for both
elements 10 and 40 in respective paragraphs [0038] and [0030]
and never discloses that elements 10 and 40 should or would ever
have distinct high and low elastic modulus as specifically defined
in independent claims 1, 12, and 21 to have the structural frame
have a higher elastic modulus than the outer frame sufficient to
maintain the accurate and dimensionally stable optical alignment
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Application 14/214,346
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of the at least one reflective optical component and the at least
one micro-display.
Id. at 11 (emphasis omitted). Appellant further argues Mizoguchi discloses
using one material for both the outer and inner frames and that, to do
otherwise, would significantly increase manufacturing costs. Id.
The Examiner responds, as follows:
Magyari et al. discloses embodiments for materials for both the
housing and the frame. Nowhere in this disclosure does Magyari
et al. disclose that the materials being used must be the same. The
[A]ppellant is incorrectly adding language to the Magyari et al.
reference that is simply not present. A person of ordinary skill in
the art would readily recognize that given a list of materials for a
given part, the part can be made of any material on the list.
Ans. 26–27.
Analysis
Appellant’s contentions are persuasive of reversible Examiner error.
Although Magyari discloses various materials from which primary
transmission housing 40 and frame 10 can be manufactured, we find
insufficient evidence of any teaching or suggestion of selecting those
materials such that the limitations of disputed claim element (v)(b) are
satisfied, i.e., that the structural frame has a higher elastic modulus than the
outer frame sufficient to maintain the accurate and dimensionally stable
optical alignment of the at least one reflective optical component and the at
least one micro-display. Although we are not persuaded by Appellant’s
argument that using different materials would increase costs so as to
dissuade one skilled in the art from modifying Mizoguchi to make the outer
and inner frames of different materials, neither does the Examiner explain
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Application 14/214,346
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why Magyari’s separate but identical listing of materials for transmission
housing 40 and frame 10 teach or suggest the materials should be different
such that the relative elastic modulus of each component meet the
requirement of recitation (v)(b). That is, even if Magyari’s separate listings
of materials teaches or suggests that housing 40 and frame 10 could be made
of different materials, the Examiner fails to provide sufficient evidence or
explanation to persuade us one skilled in the art would have selected the
materials to effect a particular elastic modulus relationship ensuring it is
“sufficient to maintain the accurate and dimensionally stable optical
alignment” of optical components as required by claim element (v)(b).
Because we agree with at least one of the arguments advanced by
Appellant, we need not reach the merits of Appellant’s other arguments.
Accordingly, we do not sustain the rejection of independent claim 1 or
the rejection of independent claims 12 and 21, which include language
similar to the argued limitation of claim 1. Nor do we sustain the rejection
of dependent claims 2–10, 13 and 15–20, which stand with their respective
base claims.
CONCLUSION
We reverse the Examiner’s rejection of claims 1–5, 8–10, 12, 13, 15–
17, and 21 under 35 U.S.C. § 103(a) as obvious over the combined teachings
of Mizoguchi, Buchon, and Magyari.
We reverse the Examiner’s rejection of claims 6, 7, and 18–20 under
35 U.S.C. § 103(a) as obvious over the combined teachings of Mizoguchi,
Buchon, Magyari, and Nanba.

Appeal 2020-002147
Application 14/214,346
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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 8–10,
12, 13, 15–
17, 21
103(a) Mizoguchi,
Buchon, Magyari
1–5, 8–10,
12, 13, 15–
17, 21
6, 7, 18–20 103(a) Mizoguchi,
Buchon, Magyari,
Nanba
6, 7, 18–20
Overall
Outcome
1–10, 12,
13, 15–21

REVERSED