Philip Lyren

Patent Trials and Appeals Board

Jun 15, 2021

2020002015 (P.T.A.B. Jun. 15, 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.
15/423,567 02/02/2017 Philip Scott Lyren PSL-025 (CON 2) 2052
64021 7590 06/15/2021
PHILIP S. LYREN, PC
289 Woodland Avenue
Wadsworth, OH 44281
EXAMINER
CHATLY, AMIT
ART UNIT PAPER NUMBER
2622
MAIL DATE DELIVERY MODE
06/15/2021 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 PHILIP SCOTT LYREN
____________________

Appeal 2020-002015
Application 15/423,567
Technology Center 2600
____________________

Before ERIC S. FRAHM, JENNIFER S. BISK, and
BETH Z. SHAW, Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–40, which constitute all the claims
pending in this application. Claims 1–20 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant
identifies the real party in interest as Philip Scott Lyren (Appeal Br. 2).
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STATEMENT OF THE CASE
Disclosed Invention and Exemplary Claim
Appellant’s disclosed invention generally relates to a wearable
electronic device that detects a real object with the wearable electronic
device, and displays a virtual image with the real object on a display of the
wearable electronic device (see Title; Spec. 5:1–5). More particularly,
Appellant’s disclosed and claimed invention concerns movement of the
virtual object on the display of the wearable electronic device when the real
object moves (see Spec. p. 19:26–20:9). For example, if a user rotates his
head forty-five degrees counterclockwise and if a position of the virtual
object did not change with respect to the display or lens, then the virtual
object would no longer appear overlaid upon a real object but appear forty-
five degrees in a counterclockwise position (see Spec. 20:11–28).
Therefore, in order to counteract this movement, the disclosed and claimed
invention changes the position of the virtual object on the display or lens of
the wearable electronic glasses (see Spec. 20:11–28).
Exemplary independent claims 21, 29, and 36 under appeal, with
emphases and bracketed lettering added to key portions of the claims at
issue, read as follows:
Claim 21 recites:
A method that extends an amount of time that a virtual
object appears with a real object in a field of view of a head
mounted display, the method comprising:
displaying, with the head mounted display, the virtual
object on one side of the real object while the virtual object and
the real object are simultaneously visible in the field of view of
the head mounted display; and
[A] moving, with the head mounted display to extend the
amount of time that the virtual object appears with the real
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object in the field of view of the head mounted display, the
virtual object from the one side of the real object to an opposite
side of the real object when the head mounted display moves
and causes a space between the virtual object and a perimeter
of the field of view to decrease such that there is no longer
sufficient space for the virtual object on the one side of the real
object.
Appeal Br. 4, Claims App. 26 (emphases added). Claim 29 recites:
A method executed by a head mounted display to move a
virtual object with respect to a real object in order to maintain
the virtual object in a field of view of the head mounted display,
the method comprising:
displaying, on a display of the head mounted display, the
virtual object adjacent to one side of the real object in the field
of view of the head mounted display;
[B] detecting, by the head mounted display, movement of
the head mounted display in which the virtual object will no
longer be within the field of view of the head mounted display;
and
moving, by the head mounted display and in response to
detecting the virtual object will no longer be within the field of
view, the virtual object to an opposite side of the real object
such that the virtual object is within the field of view of the
head mounted display on the opposite side of the real object.
Appeal Br. 4–5, Claims App. 27 (emphases added). And, claim 36 recites:
A method that changes a virtual object displayed with a
real object in order to prevent the virtual object from moving
outside a field of view of a head mounted display when the
head mounted display moves, the method comprising:
displaying, with the head mounted display, the virtual
object in a space on one side of the real object while the virtual
object and the real object are simultaneously visible in the field
of view of the head mounted display; and
[C] preventing, as a perimeter of the field of view moves
toward the virtual object, the virtual object from moving
outside the field of view of the head mounted display by
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reducing a size of the virtual object while the virtual object
remains in the space and on the one side of the real object.

Appeal Br. 5, Claims App. 29 (emphases added).
As discussed below, limitations A (see supra claim 21), B (see supra
claim 29), and C (see supra claim 36), will be dispositive of the instant
appeal.
The Examiner’s Rejections
(1) Claims 21–32 and 35–40 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the base combination of Wong et al. (US
2013/0335301 A1; published Dec. 19, 2013) (hereinafter, “Wong”), and
Noda (US 2013/0009863 A1; published Jan. 10, 2013) (hereinafter,
“Noda”). Final Act. 3–17; Ans. 3–15.
(2) Claims 33 and 34 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the base combination of Wong and Noda, further in view
of Ham et al. (US 2011/0304616 A1; published Dec. 15, 2011) (hereinafter,
“Ham”). Final Act. 17–19; Ans. 16–17.
Appellant’s Dispositive Contentions
With regard to claim 21, Appellant contends (see Appeal Br. 6, 8–16;
Reply Br. 2–4) the Examiner erred in rejecting claims 21–28 under
35 U.S.C. § 103 based on the failure of Wong and Noda to teach or suggest
when the head mounted display moves and causes a space between the
virtual object and a perimeter of the field of view to decrease such that there
is no longer sufficient space for the virtual object on the one side of the real
object (see e.g., claim 21, limitation A).
With regard to claim 29, Appellant contends (see Appeal Br. 6, 12 –
20, 23–25) the Examiner erred in rejecting claims 29–35 under 35 U.S.C.
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§ 103 based on the failure of Wong and Noda to teach or suggest detecting,
by the head mounted display, movement of the head mounted display in
which the virtual object will no longer be within the field of view of the head
mounted display (see e.g., claim 29, limitation B).
With regard to claim 36, Appellant contends (see Appeal Br. 6, 21 –
23) the Examiner erred in rejecting claims 36 –40 under 35 U.S.C. § 103(a)
based on the failure of Noda, and thus the base combination of Wong and
Noda, to teach or suggest preventing, as a perimeter of the field of view
moves toward the virtual object, the virtual object from moving outside the
field of view of the head mounted display by reducing a size of the virtual
object while the virtual object remains in the space and on the one side of the
real object (see e.g., claim 36, limitation C).
Principal Issues on Appeal
Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 4–
25) and Reply Brief (Reply Br. 2–4), the following three dispositive issues
are presented on appeal:
(1) Has Appellant shown that the Examiner erred in rejecting claims
21–28 under 35 U.S.C. § 103 because the combination of Wong and Noda
fails to teach or suggest limitation A, as recited in claim 21?
(2) Has Appellant shown that the Examiner erred in rejecting claims
29–32, and 35, and therefore claims 33 and 34 depending therefrom, under
35 U.S.C. § 103 because the base combination of Wong and Noda fails to
teach or suggest limitation B, as recited in claim 29?
(3) Has Appellant shown that the Examiner erred in rejecting claims
36–40 under 35 U.S.C. § 103 because Noda, and thus the combination of
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Wong and Noda, fails to teach or suggest limitation C, as recited in
claim 36?

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 4–
25; Reply Br. 2–4), the Examiner’s rejection as to claims 21, 29, and 36
(Final Act. 3–19; Ans. 3–17), and the Examiner’s response (Ans. 17–21) to
Appellant’s arguments in the Appeal Brief. We are persuaded by
Appellant’s contentions that the Examiner has not sufficiently shown on this
record that the combination of Wong and Noda teaches or suggests
limitations A (as to claims 21–28), B (as to claims 29–35), and C (as to
claims 36–40). Our reasoning follows.
The USPTO “must examine the relevant data and articulate a
satisfactory explanation for its action including a rational connection
between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n
v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal
quotation marks and citation omitted); see Synopsys, Inc. v. Mentor
Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an
administrative agency, the PTAB “must articulate logical and rational
reasons for [its] decisions” (internal quotation marks and citation omitted)).
We will not resort to speculation or assumptions to cure the deficiencies in
the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967).
In rejecting claims 21, 29, and 36, the Examiner relies upon the
combination of Wong and Noda (see Final Act. 3–5, 10, 12–14) as
disclosing limitations A, B, and C (see claims 21, 26, 39 (emphases added)).
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Wong discloses detecting physical objects near a substantially
transparent head-mounted display system and activating a collision-
avoidance action to alert a user of the detected objects. (Wong Figs. 1, 7;
Abstract; ¶¶ 84–95, 117, 125, 135). A collision-avoidance action may
include de-emphasizing virtual objects displayed on the head-mounted
display to provide less clustered view of the physical objects through the
substantially transparent display and/or presenting new virtual objects
(Wong Figs. 1, 7; Abstract; ¶¶ 84–95, 117, 125, 135).
Noda discloses a display control unit that controls the display of the
transparent display so that the object is viewable from the viewpoint through
the interference region by various methods (see Noda Figs. 1, 13; ¶¶ 80–82).
Noda discloses the display control unit changes the display position of the
display object in accordance with the change in the position of the
intersection punt between the screen of the transparent display and the
straight line passing through the position of the viewpoint and the position of
the object in the position information (see Noda ¶¶ 88, 89). Noda discloses
moving a virtual object in response to detecting the virtual object obstructs
the view of a physical object seen through a transparent display (Noda ¶¶ 50,
88, 89). Notably, Noda has nothing to do with head mounted displays, or
wearable electronic devices, having a perimeter of a field of view as
disclosed and claimed by Appellant (see Title; Figs. 13A–C; claims 21, 29,
36).

Issue 1: Claims 21–28
In this light, and in view of the Examiner’s explanations as to the
basis for the rejection of claim 21 (see Final Act. 3–5; Ans. 3–5, 17–21), it is
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clear the Examiner relies on the combination of Wong and Noda as teaching
limitation A of claim 21, and more specifically, relies on Noda as teaching
moving the virtual object from the one side of the real object to an opposite
side of the real object when the head mounted display moves and causes a
space between the virtual object and a perimeter of the field of view to
decrease such that there is no longer sufficient space for the virtual object on
the one side of the real object.
However, we are persuaded by Appellant’s arguments (see Appeal
Br. 6, 8–16; Reply Br. 2–4) that, although Wong teaches a collision
avoidance system that describes moving the virtual object when the user will
collide with a physical object, neither reference, alone or in combination,
discloses moving the virtual object from one side of the real object to an
opposite side of the real object when the head mounted display moves and
causes a space between the virtual object and a perimeter of the field of view
to decrease such that there is no longer sufficient space for the virtual object
on the one side of the real object, as set forth in limitation A of claim 21 (see
Appeal Br. 9). Instead, the combination of Wong and Noda disclose moving
the virtual object when the user will collide with a physical object or the
virtual object obstructs a view of the physical object (see Appeal Br. 9; see
also Reply Br. 2–4; see also Wong ¶¶ 94, 95, 117, 125, 135).
At best, the Examiner leaves us to speculate as to how or why one
of ordinary skill in the art would modify Wong and Noda to meet limitation
A recited in claim 21. See In re Warner, 379 F.2d at 1017; Ex parte
Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review
authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . .
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invite[s] the [B]oard to examine the application and resolve patentability in
the first instance.”).
Claim 21 recites that the movement of the virtual object occurs when
the space between the virtual object and a perimeter of the field of view
decreases such that there is no longer sufficient space for the virtual object
on the one side of the real object (see Appeal Br. 9; see also Reply Br. 2–4;
Wong ¶¶ 94, 95, 117, 125, 135). The combination of Wong and Noda are
not concerned with the space between the virtual object and a perimeter of
the field of view; instead, the combination of Wong and Noda focus on
determining and monitoring when the user will collide with a physical object
or when the virtual object obstructs a view to the physical object (see Appeal
Br. 9; see also Reply Br. 2–4). And, as a result, we are persuaded by
Appellant’s contention that the teachings of Wong and Noda are different
than the recitation in the claims because a movement occurs when a collision
is detected, not to extend the amount of time the virtual object appears with
the real object in the field of view (see Reply Br. 4).
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 21–28 under 35 U.S.C. § 103 over the combination of Wong
and Noda, because the combination fails to teach or suggest limitation A, as
recited in claim 21.

Issue 2: Claims 29–35
In rejecting claim 29, the Examiner states that “[c]laim 29 recites
similar limitations and subject matter as in claim 21. Thus, all the arguments
made above for claim 21 [i.e., referring to the merits discussion of claim 21
found at pages 4 through 5 of the Final Action] are applicable for claim 29”
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(Final Act. 10). The Examiner does not address or map limitation B of
claim 29 in relation to the prior art (see Final Act. 3–5, 10; Ans. 3–5, 9; see
generally Ans. 17–21).
Notably, claim 29 has different limitations and a different scope than
claim 21. Claim 29 requires, and claim 21 does not require, detecting
movement as set forth in limitation B of claim 29. As a result, the Examiner
has not shown how or why Wong, Noda, or the combination of Wong and
Noda discloses, teaches, or suggests the detecting step of limitation B in
claim 29. Notably, the Examiner’s response to Appellant’s arguments in the
Appeal Brief regarding limitation B in claim 29 (see Appeal Br. 16–
18) only addresses claim 21, and never addresses the rejection’s
deficiencies pointed out by Appellant as to claim 29.
The Examiner’s proposed combination leaves us to speculate as to
how or why one of ordinary skill in the art would modify Wong, Noda, or
the combination of Wong and Noda to meet the step of detecting movement
of the head mounted display when the virtual object will no longer be within
the field of view of the head mounted display set forth in limitation B of
claim 29. See In re Warner, 379 F.2d at 1017; Ex parte Braeken,
54 USPQ2d at 1112.
As a result, we are persuaded by Appellant’s arguments (see Appeal
Br. 6, 12–20, 23–25 ; Reply Br. 2–4) that, there is no reason to modify the
combination of Wong and Noda to detect when the virtual object will no
longer be within the field of view of the head mounted device (see Appeal
Br. 17). The combination of Wong and Noda (that concerns a transparent
display and not a head mounted display as claimed) are directed to solving
different problems associated with knowing the locations and movement of
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physical objects with respect to the user wearing the head mounted device
(see Appeal Br. 17; see also Wong ¶¶ 125, 0135; Noda ¶¶ 50, 80–82).
Appellant’s claim 29 recites moving the virtual object to an opposite
side of the real object “in response to detecting the virtual object will no
longer be within the field of view.” (Appeal Br. 18). We agree with
Appellant that “Wong and Noda have no need to detect when the virtual
object will no longer be within the field of view of the [head mounted
device] as this information is not related to solving the problem being
addressed (namely, tracking location and movement of physical objects with
respect to the user).” (Appeal Br. 17). Wong discloses detecting a potential
collision between a user and a physical object and, therefore, moving objects
(see Appeal Br. 18; see also Wong ¶¶ 94, 95, 117, 125, 135). Noda
discloses moving a virtual object in response to detecting the virtual object
obstructs the view of a physical object seen through a transparent display
(see Appeal Br. 18; see also Noda ¶¶ 50, 80–82). The combination of Wong
and Noda does not disclose detecting when the virtual object will no longer
be in the field of view, and then moving the virtual object to an opposite side
in response to this detecting (see Appeal Br. 18).
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 29–32 and 35 under 35 U.S.C. § 103 over the combination
of Wong and Noda, because the combination fails to teach or suggest
limitation B, as recited in claim 29. For similar reasons, and because
Appellant relies on the arguments presented for claim 29 for the patentability
of claims 33 and 34 (see Appeal Br. 23), Appellant has also shown the
Examiner erred in rejecting claims 33 and 34 (which directly depend from
claim 29).
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Issue 3: Claims 36–40
In rejecting claim 36, the Examiner relies on Noda, specifically
Figures 11 and 16 and paragraphs 80 through 82 and 89, as teaching
limitation C of claim 36 (see Final Act. 12–14).
Noda determines the area of the display that occupies the view of the
physical object; this area of the display is known as the interference region
(see Appeal Br. 21; see also Noda ¶¶ 80–82, 89). If the interference region
includes a virtual object, then Noda moves the virtual object so it is no
longer in the interference region and so the user can easily see the physical
object through the transparent display (see Appeal Br. 21; see also Noda
¶¶ 80–82, 89). Noda discloses moving the virtual object when it is located
in the interference region so the user can have an unobstructed view of the
physical object; Noda is not concerned with preventing the virtual object
from moving outside the field of view of the head mounted display by
reducing a size of the virtual object while the virtual object remains in the
space and on the one side of the real object as a perimeter of the field of
view moves toward the virtual object (see Appeal Br. 21).
Although Noda discloses automatically changing the size of virtual
object 230 so the virtual object 230 can be displayed in a region other than
interference region 220, Noda is silent as to preventing the virtual object
from moving outside the field of view of a head mounted display, as recited
in limitation C of claim 36. Again, the Examiner’s response to Appellant’s
arguments in the Appeal Brief regarding limitation C in claim 36 (see
Appeal Br. 21–22) only addresses claim 21, and never addresses the
rejection’s deficiencies pointed out by Appellant as to claim 36.
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Thus, again, the Examiner leaves us to speculate as to how or why one
of ordinary skill in the art would modify Wong with Noda to meet limitation
C recited in claim 36. See In re Warner, 379 F.2d at 1017; Ex parte
Braeken, 54 USPQ2d at 1112 (unpublished) (“The review authorized by
35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the
[B]oard to examine the application and resolve patentability in the first
instance.”).
As a result, we are persuaded by Appellant’s arguments (see Appeal
Br. 6, 21–23; Reply Br. 2–4) that, the Examiner has not provided a reason to
modify Wong in view of Noda to disclose limitation C recited in claim 29
(see Appeal Br. 21). “Noda is concerned with moving the virtual object
when it interferes with the viewpoint of the user seeing a physical object
through a transparent display.” (Appeal Br. 21; see also Noda ¶¶ 80–82,
89). Noda is not trying to prevent virtual objects from moving outside the
field of view; Noda is trying to prevent virtual objects from appearing in the
interference region of the transparent display (see Appeal Br. 21–22; see
also Noda ¶¶ 80–82, 89).
In view of the foregoing, Appellant has shown the Examiner erred in
rejecting claims 36–40 under 35 U.S.C. § 103 over the combination of Wong
and Noda, because Noda fails to teach or suggest limitation C, as recited in
claim 36.

Summary
In summary, the Examiner’s rejection is inadequate because it is not
supported by a preponderance of the evidence. See In re Caveney, 761 F.2d
671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is
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by a preponderance of the evidence); see also In re Warner, 379 F.2d at
1017 (“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”).
As a result, based on the record before us, Appellant has shown the
Examiner erred in rejecting independent claims 21, 29, and 36, and thus
claims 22–28, 30–35, and 37–40 depending respectively therefrom, under
35 U.S.C. § 103, and we cannot sustain the Examiner’s obviousness
rejections of (i) claims 21–32 and 35–40 over the combination of Wong and
Noda; and (ii) claims 33 and 34 over the combination of Wong, Noda, and
Ham.
Because we agree with at least one of the dispositive arguments
advanced by Appellant as to each of independent claims 21, 29, and 36, we
need not reach the merits of Appellant’s other contentions regarding
dependent claims 22–28, 30–35, and 37–40. See Beloit Corp. v. Valmet Oy,
742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative agency is at
liberty to reach a decision based on “a single dispositive issue”). In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious . . . .”).

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CONCLUSION
For all of the reasons above, we hold as follows:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–32, 35–
40
103 Wong, Noda 21–32, 35–
40
33, 34 103 Wong, Noda, Ham 33, 34
Overall
Outcome
21–40

REVERSED