3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

Mar 8, 2021

2019006885 (P.T.A.B. Mar. 8, 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.
14/651,260 06/11/2015 Brian E. Brooks 69633US004 5494
32692 7590 03/08/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
YANG, YI
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
03/08/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN E. BROOKS and
FREDERICK J. ARSENAULT
____________________

Appeal 2019-006885
Application 14/651,260
Technology Center 2600
____________________

Before ERIC S. FRAHM, JOHNNY A. KUMAR, and
JAMES W.DEJMEK Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3–11, and 13–15. We have jurisdiction over the
appeal of these claims pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2018). Appellant identifies 3M Company and its affiliate 3M
Innovative Properties Company as the real parties in interest (Appeal Br. 2).
Appeal 2019-006885
Application 14/651,260

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STATEMENT OF CASE
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter added):
1. A computer-implemented system for facilitating automatic
generation of animated content to be rendered on an
electronically addressable display, the system comprising:
a rule management module configured to receive a
plurality of rules on content generation, the plurality of rules
comprising a rule on categorical relationships and [1] a rule on
probability factor, the rule on probability factor specifying the
probability of content configurations including a configuration
element that has a particular attribute value; and
a content generation module communicatively coupled to
the rule management module and configured to generate an
animated content configuration in accordance with the rule on
probability factor and the rule on categorical relationships, the
animated content configuration specifying at least two content
elements to be rendered on a display and their categorical
relationships to one another on the display, [2] the categorical
relationship including at least one of relative position, size and
orientation;
the animated content configuration further comprising a
transition, which modifies a displayed attribute of one of the
two content elements over a period of time.
(Appeal Br. 7, Claims App.)
REJECTION
Claims 1, 3–11, and 13–15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Brooks (US 2009/0158179 A1, published June 18,
2009 in view of Walker et al. (US 7,594,189 B1, issued Sept. 22, 2009) and
further in view of Cheng et al. (US 2008/0291216 A1, published November
27, 2008).

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ANALYSIS2
Issue on Appeal: Did the Examiner err in combining Brooks, Walker,
and Cheng to teach or suggest all the limitations of independent claim 1 (and
similarly recited in claim 11) because the references are not properly
combinable?
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions that the Examiner has erred. See Appeal Br. 3–6. Further, we
have reviewed the Examiner’s response regarding claims 1, 3–11, and 13–15
to the arguments presented by Appellant.
We disagree with Appellant’s arguments. To the extent consistent
with our analysis below, we adopt as our own (1) the findings and reasons
set forth by the Examiner in the action from which this appeal is taken and
(2) the reasons set forth by the Examiner in the Examiner’s Answer in
response to Appellant’s Appeal Brief. Ans. 9–12. We concur with the
conclusions reached by the Examiner. We note that no Reply Brief is of
record to rebut the Examiner’s responses to Appellant’s arguments. We
highlight and address specific findings and arguments for emphasis as
follows.
The Examiner finds that Brooks teaches all elements of exemplary
claim 1 (Final Act. 4, 5), except for element [1] for which the Examiner
relies upon Walker (Final Act. 6); and element [2] for which the Examiner
relies upon Cheng. (Final Act. 6, 7).

2 As to independent claim 11, Appellant merely repeats for this claim the
same or similar arguments directed to claim 1. (Appeal Br. 5, 6). Except for
our ultimate decision, claim 11 is not discussed further herein.

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Appellant’s arguments with respect to the Examiner’s obviousness
rejection of claim 1 mainly focus on whether Brooks, Walker, and Cheng are
combinable. Appeal Br. 4, 5.
In particular, Appellant contends:

[T]he Examiner erroneously cherry picks passages from
Walker and Cheng, without considering whether such a
combination [with Brooks] would have been suggested to one
of ordinary skill in the art.
…
However, even assuming, arguendo, that Walker describes
applying, to generate an animated content configuration, a rule
of probability factors -that is, the probability of content
configurations including a configuration element that has a
particular attribute value-which Appellants do not concede, the
Examiner has at least failed in articulating any reason why one
of ordinary skill in the art would further modify Brooks in view
of Walker with the additional application of Cheng.
…
The Examiner’s stated rationale for modifying Brooks in view
of Walker is “to enable interaction between the computer
generated graphics and the terrain represented by the
photograph.” Neither of Brooks or Walker describes ‘terrain’
represented by 'a photograph,' so it is unclear why one of
ordinary skill in the art would want to "enable interaction" with
such features. Instead, it appears that the Examiner, with the
benefit of hindsight, has selected words and phrases from
Cheng to attempt to cure the gap in disclosure.
Appeal Br. 4, 5.

The Examiner finds:

[I]t would be obvious to one of ordinary skill in the art at the
time of the invention was made to combine Brooks to include a
rule on probability factor as taught by Walker, to provide
relatively accurate results and more customizable content
without a large amount of human intervention.
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Final Act. 4–6 (see also Ans. 10, citing Brooks ¶¶ 11, 57, 113); and see
Walker, Abstract, Figure 4, col. 10, ll. 39–66.
Regarding element [2] of claim 1 about “at least one of relative
position, size and orientation”, we note that Brooks explicitly discloses this
limitation:
[0050] FIG. 4B illustrates how the developed content shown in
FIG. 4A is more appropriately arranged in a manner consistent
with design rules or models developed from principles of
cognitive and vision sciences. The locations and size of the
content elements 42, 44, 46, and 48 shown in FIG. 4B have
been changed in accordance with design rules/models
developed from principles of cognitive and vision sciences.
Aspects of the content elements other than, or in addition to,
location and size relative to the display 40 may be modified as
well, such as font of text, text orientation, foreground and
background colors, color intensity, proportion of the content
elements relative to one another, relative brightness, among
others. Adjustment of the content elements may be
implemented in a semi-automatic or fully automatic manner via
computer assistance.

(emphasis added).

We agree with the Examiner because Appellant’s arguments do not
take into account what the collective teachings of the prior art would have
suggested to one of ordinary skill in the art and are therefore ineffective to
rebut the Examiner’s prima facie case of obviousness. See In re Keller,
642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the references. Rather, the test is
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what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” (Citations omitted)). This reasoning is
applicable here.
We further note that the Examiner has found actual teachings in the
prior art and has provided a rationale for the combination (see Final Act. 4–
6). We note that the above-noted teachings suggest that the combination
involves the predictable use of prior art elements according to their
established functions. There is no requirement that the problem solved by
the secondary reference be discussed by the primary reference to apply the
teachings of the secondary reference in a rejection under 35 U.S.C. § 103.
The Supreme Court has held that in analyzing the obviousness of combining
elements, a court need not find specific teachings, but rather may consider
“the background knowledge possessed by a person having ordinary skill in
the art” and “the inferences and creative steps that a person of ordinary skill
in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). To be nonobvious, an improvement must be “more than the
predictable use of prior art elements according to their established
functions,” id. at 417, and the basis for an obviousness rejection must
include an “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Id. at 418 (citation omitted). Here, the
Examiner has provided a rationale for the combination. Accordingly, we
find that the Examiner has provided sufficient motivation for modifying
Brooks with the teachings of Walker.
Regarding Appellant’s hindsight argument, we are cognizant that our
reviewing courts have not established a bright-line test for hindsight. In KSR
International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), the Supreme Court
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guides that “[a] factfinder should be aware, of course, of the distortion
caused by hindsight bias and must be cautious of argument reliant upon ex
post reasoning.” KSR, 550 U.S. at 421 (citing Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 36 (1966)). Nevertheless, the Supreme Court
qualified the issue of hindsight by stating, “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” Id.
In reviewing the record here, we find Appellant has not identified any
knowledge relied upon by the Examiner that was gleaned only from
Appellant’s disclosure and that was not otherwise within the level of
ordinary skill in the art at the time of application filing. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Moreover, Appellant has not provided persuasive evidence that
combining the respective teachings of the references (as proffered by the
Examiner — Ans. 10) would have been “uniquely challenging or difficult
for one of ordinary skill in the art,” or that such a combination would have
“represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007). Nor has Appellant
provided any objective evidence of secondary considerations, which, as our
reviewing court explains, “operates as a beneficial check on hindsight.”
Cheese Sys., Inc. v. Tetra Pak Cheese & Powder Sys., Inc., 725 F.3d 1341,
1352 (Fed. Cir. 2013).
Also, we note that while the secondary reference Cheng was used by
the Examiner for teaching “the categorical relationship including at least one
of relative position, size and orientation,” (element [2] of claim 1) (Final
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Act. 6), any teaching regarding Cheng for the relative position, size and
orientation limitation is considered cumulative.
The Board may rely on less than all of the references applied by the
Examiner in an obviousness rationale without designating it as a new ground
of rejection where, as here, the thrust of the rejection has not changed. See
In re Boyer, 363 F.2d 455, 458 n.2 (CCPA 1966) (citing In re Bush, 296
F.2d 491, 496 (CCPA 1961)); see also MPEP § 1207.03(a)(II).
Accordingly, we sustain the Examiner’s rejection of representative
independent claims 1 and 11, as well as claims 3–10, and 13–15 grouped
therewith, on the basis of Brooks and Walker.
Accordingly, Appellant has not provided sufficient evidence or
argument to persuade us of any reversible error in the Examiner’s reading of
the contested limitations on the cited prior art, or in the proper combinability
of the prior art references as suggested by the Examiner. Therefore, we
sustain the Examiner’s obviousness rejections of claims 1, 3–11, and 13–15.

CONCLUSION
In summary:

Claim(s)
Rejected
35 U.S.C
§
Reference(s)/Basis Affirmed Reversed
1, 3–11, 13–
15
103 Brooks, Walker,
Cheng
1, 3–11, 13–
15

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).
AFFIRMED