Spy Eye, LLCDownload PDFPatent Trials and Appeals BoardOct 19, 20212020004020 (P.T.A.B. Oct. 19, 2021) Copy Citation 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. 15/974,904 05/09/2018 Michael Frank Deering 32774-39731/US 9474 143795 7590 10/19/2021 Tectus / Fenwick 801 California Street Mountain View, CA 94041 EXAMINER NADKARNI, SARVESH J ART UNIT PAPER NUMBER 2623 NOTIFICATION DATE DELIVERY MODE 10/19/2021 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): fwtectuspatents@fenwick.com patents@tectuscorp.com ptoc@fenwick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MICHAEL FRANK DEERING and ALAN HUANG Appeal 2020-004020 Application 15/974,904 Technology Center 2600 ____________ Before RICHARD M. LEBOVITZ, ST. JOHN COURTENAY, III, and JOHNNY A. KUMAR, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected the claims under 35 U.S.C. § 102 as anticipated and under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. 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. Appellant identifies the real party in interest as Tectus Corporation. Appeal Br. 2. Appeal 2020-004020 Application 15/974,904 2 STATEMENT OF THE CASE The Examiner rejected claims 1–19 in the Final Action as follows: Claim 1–6, 9–11, 13, 14, and 15 under 35 U.S.C. § 102(a)(2) as anticipated by Iwasaki (US 2006/0227067 A1, published Oct, 12, 2006) (“Iwasaki”). Final Act. 3. Claim 7 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Kim et al., US 2016/0091737 A1, published Mar. 31, 2016) (“Kim”). Final Act. 6. Claim 8 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Blum et al. (US 2014/0327875 A1, published Nov. 6, 2014) (“Blum”). Final Act. 7. Claim 12 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Trajkovska-Broach et al., US 2014/0036172 A1, published Feb. 6, 2014) (“Trajkovska-Broach”). Final Act. 8. Claim 16 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Pugh et al. (US 2009/0244477 A1, published Oct. 1, 2009) (“Pugh”). Final Act. 8. Claim 17 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Bos et al. (US 2014/0132904 A1, published May 15, 2014) (“Bos”). Final Act. 9. Claims 18 and 19 under 35 U.S.C. § 103 as obvious in view of Iwasaki and Amirparviz et al. (US 2010/0001926 A1, published Jan. 7, 2010) (“Amirparviz”). Final Act. 10. Claim 1, the only independent claim on appeal, is reproduced above: Appeal 2020-004020 Application 15/974,904 3 1. An eye mounted display, comprising: a contact lens; and a plurality of image projectors mounted in the contact lens, each image projector comprising: a display element that produces an image; and non-folded optics that project the image from the display element onto a retina of a user wearing the contact lens, where the image projector has an in-line optical design; and where each of the display elements produces a different image. CLAIM 1 Claim 1 is directed to an eye mounted display comprising a contact lens and a plurality of image projectors mounted in the contact lens. The projectors produce images on the retina when the contact lens is worn by a user. Spec. ¶¶ 948–956, 958. Each image projector comprises (1) a display element that produces the image and (2) a non-folded optics. The “display element” is described in the Specification as comprising light emitting pixels, which can be OLED, LED, LCD displays, etc. Spec. ¶ 776. The optics projects the image from the display element on to the retina of the user. The “optics” is described in the Specification as being a type of lens. Spec. ¶ 769. The term “non-folded optics” distinguishes the optics from a type of design referred to as “folded optics.” Id. The claim requires that each of the display elements produces a different image. Although the claim does not expressly recite the structure that enables the display element to produce the image, and for each display element to produce a different image, we do not interpret the limitations to be purely functional, but rather interpret them to denote a specific structure Appeal 2020-004020 Application 15/974,904 4 of the display element. This interpretation is based on their description in the Specification. During prosecution, claims must be given their broadest reasonable interpretation in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). A proper claim construction analysis endeavors to assign a meaning to a disputed claim term “that corresponds with . . . how the inventor describes his invention in the specification.” In re Smith Int’l, Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017). Instead, a proper claim construction analysis endeavors to assign a meaning to a disputed claim term “that corresponds with . . . how the inventor describes his invention in the specification.” Id. Specifically, as indicated above, the Specification describes the display elements as made of light-emitting pixels. Spec. ¶ 776. The shapes of the display elements, and projectors of which they are part, can vary depending on their position on the lens (Spec. ¶ 791; Fig. 56). The Specification also explains that the projectors are wired (Spec. ¶ 888) to enable “multiple different projectors . . . to form the desired image on the retina” (Spec. ¶ 784). In the context of this description in the Specification, we interpret each projector, and display element in it, to have a specific shape and wiring that are the necessary structural elements which enable the projector to project a different image using the display element. ANTICIPATION REJECTION The Examiner found that Iwasaki describes an “image display apparatus” that comprises all the features recited in claim 1 of the claimed “eye mounted display.” Final Act. 3–4. The Examiner also found that each Appeal 2020-004020 Application 15/974,904 5 “display element” of Iwasaki produces a different image as required by rejected claim 1, pointing to Figure 8 of Iwasaki as showing this limitation of the claim. Id. at 4. Appellant does not dispute that Iwasaki describes the claimed contact lens and image projectors, but argues that each display element in Iwasaki produces the same image, not a different image as required by the claim. Appeal Br. 7. The Examiner, citing Figures 3 and 8 of Iwasaki, finds that “the pixels of each display element produces a different portion of the image by the lenses collimating and forming the light rays at various points” on the retina. Ans. 5. The dispositive issue in this appeal thus centers upon the broadest reasonable interpretation of “each of the display elements produces a different image.” Claim 1. To provide context, we begin by discussing Iwasaki, cited by the Examiner as describing the disputed claim limitation. Iwasaki describes an image display apparatus comprising display elements and lens. Iwasaki ¶ 33. A display element is described by Iwasaki as including, “e.g., a liquid crystal display, an organic electroluminescence (EL) display, or a field emission display (FED).” Id. ¶ 35. The display element therefore does not display images any differently than the display element described in the Specification and in the rejected claims. Spec. ¶ 776. Figure 7, of Iwasaki copied below, shows the display elements and lens of the image display apparatus. Appeal 2020-004020 Application 15/974,904 6 The elements labeled “42” are the display areas of the display elements. Iwasaki ¶ 50. Each display element is associated with a lens labeled as 44-21, 44-22, and 44-23. Id. Each display element 42 displays an image 91 (“Real images 91-21, 91-22, and 91-23 are displayed in the display areas 42-21A, 42-22A, and 42-23A, respectively.”). Id. Iwasaki further discloses that “real images 91-21 to 91-23 are substantially the same.” Id. (emphasis added). The way in which Iwasaki’s display apparatus produces an image on the retina is explained with respect to Figure 8, which is copied below. Appeal 2020-004020 Application 15/974,904 7 Figure 8 of Iwasaki, reproduced above, shows that the same image representing a letter “S” is displayed by each display element (“as shown in FIG. 8, it is assumed that the same images 111-31 to 111-33 (each representing a letter ‘S’) are displayed in display areas 42-31A to 42-33A, respectively”). Iwasaki ¶ 57 (italics added). Although the image in each display region is the same (Iwasaki ¶¶ 50, 57), only a segment of each image is actually displayed on the retina because, as Iwasaki explains, not all the light rays emitted from the display area are collected by the lens (shown as 44-31 to 44-33) to form an image. Id. ¶ 54.2 This is illustrated in Figure 8 where the leftmost segment of the S is derived from the leftmost display element, the middle segment of the S is derived from the middle display element, and the rightmost segment of the S from the rightmost display 2 “It is the most difficult for light rays 81-23 emitted from the leftmost pixel in the display area 42-23A to form an image at the point 14-13 in the visual field on the retina 15.” Appeal 2020-004020 Application 15/974,904 8 element. Although the images in each display area are the same, the light emitted from each display element is collated by the lens in such a way that only a segment of the image is projected on the retina. The image 112 is described by Iwasaki as “one combined virtual image” produced by collecting the light from each display area and corresponding lens on to the retina. Id. ¶ 56. See Appeal Br. 8–11 for a more detailed explanation. The Examiner finds the limitation in claim 1 is anticipated because: the light rays from each of the display elements 42-31, 42-32 and 42-33 each produce a different image when the light rays are substantially collimated by a lens 44-31 through 44-33 to produce the respective different images at points 14-21 through 14-23, and form the entire “S” visually perceptible by the user. Ans. 7. We understand the Examiner interpretion of the term “produces” in claim 1 as meaning a different image is produced “when light rays” are collected by the lens, which is part of the image projector, and projected on the retina. The claim, however, requires that the display element “produces a different image,” not that the display element and “non-folded optic,” which make up the projector, produce a different image. Thus, the Examiner’s interpretation of the claim is not its “broadest reasonable interpretation” because the claim specifically refers to the display element as producing an “image” and recites that this “image” is “different” for each display element. The claim does not recite that a different image is produced by the “image projector” or from the “non-folded optics.” We conclude the Examiner’s interpretation of the claim is not reasonable because the claim recites the function of each display element is to produce a different image (a function we interpreted to require a specific structure). Appeal 2020-004020 Application 15/974,904 9 In contrast to claim 1, as explained above, we find the display element in Iwasaki produces the same image. The light emitted from the same image of the display element produces only segments of the same image on the retina and cooperate with other display elements, also producing the same image, to produce the combined image projected on the retina. The claimed display element is distinguished from the display element described by Iwasaki based upon its structure that enables it to produce the different images. The Examiner did not identify evidence from Iwasaki that the display elements are described as, or capable of, producing different images. Because the Examiner erred in the broadest reasonable interpretation of claim 1, we are compelled to reverse its rejection, and dependent claims 2–6, 9–11, 13, 14, and 15 which depend from it. OBVIOUSNESS REJECTIONS The Examiner further rejected dependent claims based on Iwasaki and additionally cited publications. The Examiner did not find that any of the additionally cited publications make up for the deficiency identified above in Iwasaki. Consequently, we are compelled to reverse the rejection of these claims. Appeal 2020-004020 Application 15/974,904 10 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 9–11, 13, 14, 15 102 Iwasaki 1–6, 9–11, 13, 14, 15 7 103 Iwasaki, Kim 7 8 103 Iwasaki, Blum 8 12 103 Iwasaki, Trajkovska- Broach 12 16 103 Iwasaki, Pugh 16 17 103 Iwasaki, Bos 17 18, 19 103 Iwasaki, Amirparviz 18, 19 Overall Outcome 1–19 REVERSED Copy with citationCopy as parenthetical citation