Ex Parte 6700711 et al

Patent Trials and Appeals Board

Sep 29, 2014

95001876 - (S) (P.T.A.B. Sep. 29, 2014)

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.
95/001,876 01/26/2012 6700711 199-0907RX 8205
7590 01/04/2017
JOSEPH L. LAZAROFF, ESQ.
LAW OFFICES OF JOSEPH L. LAZAROFF
16 YARMOUTH ROAD
ROWAYTON, CT 06853-1844
EXAMINER
HUGHES, DEANDRA M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/04/2017 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
____________

POLYCOM, INC.,
Requester,

v.

FULLVIEW, INC.,
Patent Owner.
____________

Appeal 2016-008299
Reexamination Control 95/001,876
Patent 6,700,711 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge, SIU.

Opinion Dissenting filed by Administrative Patent Judge, BRANCH.

SIU, Administrative Patent Judge.

DECISION
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BACKGROUND
In an earlier Decision, Appeal No. 2014-003318, mailed
September 29, 2014 (“Decision”), we reversed the Examiner’s decision
favorable to the patentability of claims 1, 5, 9–15, 25, 29, and 33–39 under
35 U.S.C. § 102 as anticipated by Uehira and entered a new ground of
rejection pursuant to 37 C.F.R. § 41.77(b) of claims 1–39 under 35 U.S.C.
§ 103(a) as unpatentable over Lelong and Uehira. Decision 17–18.
Patent Owner elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(1) (“Patent Owner Request Under 37 C.F.R. § 41.77(b)(l) to
Reopen Prosecution on New Ground of Rejection Entered by PTAB,” filed
October 29, 2014, “PO Request”) in which Patent Owner submitted new
evidence including a Declaration of Arun Netravali, filed October 29, 2014
(“Netravali Decl.”) and a Declaration of Vishvjit S. Nalwa, filed October 29,
2014 (“Nalwa Decl.”).
Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in
response to Patent Owner’s Request to Reopen Prosecution (“Third Party
Requestor Comments on Patent Owner Request to Reopen Prosecution and
on Board Decision,” filed November 26, 2014, “3PR Comments”) and a
Declaration of Stephen D. Fantone, filed November 26, 2014 (“Fantone
Decl.”) and argued that “the rejection of all claims as obvious over the
combination of Lelong and Uehira is proper and should be maintained.”
3PR Comments 16.
In the Order Remanding Inter Partes Reexamination Under 37 C.F.R.
§ 41.77(d) to the Examiner, mailed January 28, 2015, (“Remand”) 2–3, the
matter was remanded to the Examiner for consideration of Patent Owner’s
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and Requester’s comments and evidence as they pertain to grounds of
rejection.
In accordance with 37 C.F.R. § 41.77(e), the Examiner determined
that Patent Owner’s arguments and evidence “overcome[] the new grounds
of the rejection by the Board.” Examiner’s Determination, mailed April 7,
2015, (“Examiner’s Determination”) 9.
In response to the Examiner’s Determination, Requester filed “Third
Party Requestor’s Comments to Examiner Determination Under 37 C.F.R.
§ 41.77(d),” filed May 6, 2015, (“3PR Comments on Exr’s Determ.”), and
Patent Owner filed “Patent Owner Reply to Requester Comments on
Examiner’s Determination Under § 41.77(e),” filed June 5, 2015
(“PO Comments on Exr’s Determ.”).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.

CONTENTIONS AND ANALYSIS
Patent Owner’s Declarant Arun Netravali testifies that the
combination of Uehira and Lelong fails to disclose or suggest “merging
images such that portions of fields of view where the images are merged
have ‘viewing directions that are substantially similar’ BUT ‘appear to
originate substantially’ from ‘offset points,’” and Declarant notes that
“offset (rather than coincident) viewpoints result in dissimilar viewing
directions to any object point and yet, . . . viewing directions from the
different viewpoints are substantially similar where the images are merged,
as in Fig. 14.” Netravali Decl. ¶ 17. We are persuaded that Requester has
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not demonstrated sufficiently that Lelong (or Uehira) discloses or suggests
the “viewing directions” of “portions” of at least two fields of view as
recited in claim 1.
Claim 1 recites “at least two fields of view” and that each of the at
least two fields of view has portions that each has viewing directions that are
substantially similar to the viewing direction of another (adjacent) portion.
Claim 1 also recites that the viewing direction in one portion appears to
originate substantially from a point that is offset from a corresponding point
on the other (adjacent) portion. Independent claim 25 recites similar
features. Requester originally argued that Lelong discloses these features.
Request for Inter Partes Reexamination of U.S. Patent No. 6,700,711 B2
Under 35 U.S.C. § 311 and 37 C.F.R. § 1.913, Ex. C (“Orig. Req. Ex. C”) 2.
In particular, Requester argued that Lelong discloses that the “n adjacent
fixed cameras are also arranged in such a way that their optical centers P,
referred to as view points coincide” and equated this disclosure of Lelong,
presumably, with the claim feature of at least two fields of view, each with a
“portion” in which a viewing direction of one “portion” is “substantially
similar” to the viewing direction of the other “portion” (i.e., that the “view
points coincide” in Lelong and, therefore, must be substantially similar). Id.
Requester also argued that Lelong discloses that “view points of the
n cameras need not coincide physically” and may be “separated or offset by
5 or 10 cm” and equated this disclosure of Lelong with the claim feature of
viewing directions within the portions appearing to originate substantially
from a point that is offset from the point for the other one of such two
portions. Orig. Req. Ex. C 2. In other words, according to Requester’s
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initial arguments, Lelong discloses that “view points” are both “substantially
similar” to each other (because they “coincide”), but, at the same time, are
substantially “offset” because they “need not coincide physically” and, in
one example is “offset by 5 or 10 cm.”
Even assuming for the sake of argument that the “view point” of
Lelong is properly equated with the claimed “viewing directions,” we do not
agree with Requester’s argument. First, Lelong discloses that the “5 or 10
cm” offset would be considered “small as regards their distance to the filmed
panoramic scene.” Lelong 7:7–8. In view of the explicit disclosure of
Lelong that such an offset would be considered “small,” we do not agree
with Requester’s original argument that one of skill in the art would have
considered such an offset (of 5 or 10 cm) to be “substantial,” as recited by
claim 1. In any event, Requester does not explain sufficiently how the same
“view points” of Lelong (equated to the claimed viewing directions of the
portions by Requester) would have been considered by those of skill in the
art to be both “substantially similar” and “substantially . . . offset” from each
other at the same time, or how such seemingly contradictory conditions can
coexist simultaneously at all.
In the Right of Appeal Notice, mailed January 23, 2013 (“RAN”), the
Examiner stated that Lelong discloses that “[t]he cameras are arranged to
have a common viewpoint or very close viewpoints.” RAN 4 (citing Lelong
6:38–39). In other words, the Examiner appears to have adopted
Requester’s initial mapping of the claimed “viewing directions” of
“portions” to the “view points” of Lelong. However, the Examiner does not
further explain how the apparent “view points” of Lelong are both
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substantially similar and substantially offset in view of Requester’s claim
mapping as discussed above.
The Dissent “contemplates using Uehira’s mirrors in the system of
Lelong.” Dissent 4. According to the Dissent, claim 1 recites redirecting at
least a portion of its individual field of view (of a sensor) with a reflective
area. Hence, reliance is made on Uehira merely for disclosing the use of a
mirror (or “reflective area,” as claimed), but there is no reliance on Uehira to
disclose or suggest the claimed “viewing directions” of “portions” of fields
of view or the substantial similarity or offsets of points of apparent
origination of such viewing directions. Id. 4–5. Rather, in the Dissent’s
view, Lelong is cited as disclosing or suggesting each claim feature other
than the “reflective area” limitation. Id. However, as discussed above,
Lelong has not been demonstrated to disclose or suggest the “viewing
directions” that originate from offset points of apparent origination, as
claimed.

CONCLUSION
In view of the above, we affirm the Examiner’s non-adoption of the
rejection of claims 1–39 as obvious over the combination of Lelong and
Uehira.
In accordance with 37 C.F.R. § 41.79(a)(4), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he new decision of the Board under § 41.77(f).” A request
for rehearing must be in compliance with 37 C.F.R. § 41.79(b). Comments
in opposition to the request and additional requests for rehearing must be in
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accordance with 37 C.F.R. § 41.79(c) & (d), respectively. Under 37 C.F.R.
§ 41.79(e), the times for requesting rehearing under paragraph (a) of this
section, for requesting further rehearing under paragraph (d) of this section,
and for submitting comments under paragraph (c) of this section may not be
extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 7, July 2008).

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
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

POLYCOM, INC.
Requester

v.

FULLVIEW, INC.
Patent Owner
____________

Appeal 2016-008299
Reexamination Control 95/001,876
Patent 6,700,711 B2
Technology Center 3900
____________

Before STEPHEN C. SIU, BRADLEY W. BAUMEISTER, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge, dissenting.

I respectfully dissent from my colleagues’ opinion. Contrary to the
Examiner’s determination (Examiner’s Determination 4–6) and the
Majority’s conclusion, in my view, the Netravali Declaration does not
overcome the new ground of rejection of claims 1–39 under 35 U.S.C.
§ 103(a) as unpatentable over Lelong and Uehira. See, e.g., Examiner’s
Determination, mailed April 7, 2015, 8–9.
Dr. Netravali declares that “a POSITA would not understand Uehira’s
mirrors to ‘redirect’ a ‘field of view’ as stated in the language of claim 1.”
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Netravali Declaration ¶ 14. Dr. Netravali also declares that “no POSITA
could conclude that Uehira does or can provide offset viewpoints, as
required by the claims.” Id. ¶ 15. Dr. Netravali also declares that “[m]oving
the mirrors or sensors does not change sensor viewpoints in Uehira precisely
because the ‘field of view’ of each sensor is in front of its image-forming
lens, where it is out of reach of the mirrors in Uehira.” Id. ¶ 16.
Dr. Netravali declares that “[n]o POSITA could then possibly understand
Uehira and Lelong to teach redirecting a field of view and merging images
such that portions of fields of view where the images are merged have
‘viewing directions that are substantially similar’ BUT ‘appear to originate
substantially’ from ‘offset points.’” Id. ¶ 17. Dr. Netravali also declares
that “[e]ven if every claim element individually found support in Uehira and
Lelong, which it does not, nothing in Lelong and Uehira supports the
simultaneous existence of all claim elements.” Id. ¶ 18.
In our previous decision, mailed September 29, 2014 (“Decision”), we
found that:
[A]t the time of Patent Owner’s invention, one skilled in the art,
in view of the combination of Lelong and Uehira, would have
found it obvious to employ Uehira’s mirrors in Lelong’s system
to “redirect[] at least a portion of [a sensor’s] individual field of
view with a reflective area” as recited in claim 1. Indeed,
Lelong explicitly teaches the use of mirrors in certain
situations.
Decision 14 (citing Lelong 7:10–15). The cited portion of Lelong reads as
follows:
The condition of coincidence [of multiple view points] is thus
estimated to be fulfilled if the ratio between these distances is
of the order of or is more than 50 and, according to the
invention, it is not necessary to use costly optical mirror
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systems which are difficult to adjust for achieving a strict
coincidence of the view points.
Lelong 7:10–15. The assertions from the Netravali Declaration quoted
above do not address this disclosure of Lelong – nor any other disclosure of
Lelong (see, generally, the Netravali Declaration) – and, therefore, cannot
overcome a rejection that is based on what the combined teachings of
Lelong and Uehira would have taught or suggested to a person of ordinary
skill in the art.
The Examiner’s determination that the Netravali Declaration
overcomes the rejection is based, in part, on the Examiner’s agreement with
Dr. Netravali’s following declaration:
It is counterintuitive why anyone would use mirrors to make the
viewpoints of multiple sensors coincide (as in Uehira) only to
turn around and deliberately offset these viewpoints in a
specific fashion, as in claim 1, such that portions of fields of
view where images are merged have “viewing directions that
are substantially similar” BUT “appear to originate
substantially” from “offset points,” two requirements that
conventional wisdom would not place together.
Netravali Declaration ¶ 20; see Examiner’s Determination 4. This amounts
to an assertion that one of ordinary skill in the art would have been
motivated to use Uehira’s mirrors in Lelong’s system only for the purpose of
achieving strict coincidence, for to do otherwise would be
“counterintuitive.” I do not find this line of reasoning sufficient to overcome
the rejection.
The rejection includes the following findings and reasoning:
We further find that one skilled in the art at the time of
Patent Owner’s invention would have realized, in view of the
combined teachings of Lelong and Uehira, together with the
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general knowledge of one skilled in the art of optical systems,
that adjusting a sensor’s displacement with respect to a
reflective surface alters the sensor’s field of view by either
increasing or decreasing the sensor’s field of view of a scene.
Uehira and/or Lelong teach gaps (resulting in blind regions in
the composite image) or overlaps when multiple sensors are
used to capture an image of a scene. See, e.g., Uehira 232 and
Lelong 9:32–48 and Fig. 7C. Hence, it would have been within
the capability of the ordinarily skilled artisan to arrange the
familiar optical elements taught by Lelong and Uehira such that
two sensors having substantially similar viewing directions
produce images that appear to originate from offset viewpoints
by placing them at different distances from a reflective surface
that redirects their individual fields of view toward the same
scene.
Decision 14–15.
Hence, our decision was not based on the use of Uehira’s mirrors only
for the purpose of achieving “strict” – as opposed to “substantial” –
coincidence of multiple viewpoints. Rather, our decision recognized that it
would have been within the capability of one of ordinary skill in the art to
arrange familiar optical elements to achieve different degrees of
coincidence.
In other words, the rejection contemplated using Uehira’s mirrors in
the system of Lelong to redirect the field of view of one of Lelong’s sensors.
Thus, it matters not that Uehira’s field of view is out of reach of Uehira’s
mirrors, as the Netravali Declaration states (¶¶ 14–18). The Netravali
Declaration does not negate our prior reasoning that:
[A]t the time of Patent Owner’s invention, one skilled in the art,
in view of the combination of Lelong and Uehira, would have
found it obvious to employ Uehira’s mirrors in Lelong’s system
to “redirect[] at least a portion of [a sensor’s] individual field of
view with a reflective area” as recited in claim 1.
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Decision 14. That reasoning was based, at least in part, on the teachings of
Lelong. Id. (citing Lelong 7:10–15). Because the Netravali Declaration
overlooks our reliance on the combined teachings of Lelong and Uehira and
conspicuously fails to address this teaching of Lelong or any other portion of
Lelong, Patent Owner’s new evidence does not establish a persuasive case
that overcomes our new ground of rejection.
Requester’s expert makes the point that, in view of the combined
teachings of Lelong and Uehira, a person of ordinary skill in the art, being
aware of “tradeoffs and the need for different system designs based on
differing conditions,” “would [have considered] the planar arrangement of
Lelong and a more compact, in the plane, but taller arrangement as
alternatives or design choices, based on the end use environment.” Fantone
Declaration ¶ 15. Dr. Fantone declares that “an optical mirror system could
be substituted for the planar arrangement of Lelong.” Id. ¶ 16.
The Examiner uses this statement against Requester, finding that it
supports the conclusion that it is counterintuitive to modify the system of
Lelong with mirrors “to ‘redirect a portion of the sensors (i.e., cameras)
individual field of view with a reflective area’ because [Requester] admits
the only practical way to modify Lelong with an optical mirror system is to
replace the system of Lelong altogether.” Examiner’s Determination 5. I
disagree.
Substituting an optical mirror system for Lelong’s planar arrangement,
as suggested by Requester, does not require replacing the system of Lelong
“altogether,” as asserted by the Examiner. Instead, inserting Uehira’s
mirrors to redirect a field of view of one or more of Lelong’s cameras, as in
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our rejection, accomplishes the “substitution” Requester argues would have
been an obvious alternative or design choice. Fantone Declaration ¶ 15.
Accordingly, I would find that the Examiner erred by finding that Requester
admitted “the only practical way to modify Lelong with an optical mirror
system is to replace the system of Lelong altogether.” Examiner’s
Determination 5.
Instead, modifying Lelong from a planer system to an optical mirror
system could have been accomplished merely by including mirrors, such as
in Uehira. This would have been an obvious modification in view of the
familiarity of the optical elements as evidenced by the combined teachings
of the references, together with the knowledge and skill of one of ordinary
skill in the art at the time of Patent Owner’s invention. Decision 15 (citing
KSR Int 'I Co. v. Teleflex Inc., 550 U.S. 398, 416–17 (2007):
The combination of familiar elements according to
known methods is likely to be obvious when it does no more
than yield predictable results .... [I]f a technique has been used
to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual
application is beyond his or her skill.

Patent Owner’s expert presents a similarly unconvincing case with
respect to claim 2’s “blind regions.” See claim 2: “wherein the field of view
corresponding to the composite image has at least one blind region that
encompasses at least a portion of an edge of a reflective area and that lies
between the two portions of the two individual fields of view.” In rejecting
this claim over the combination of Lelong and Uehira, we said the
following:
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Lelong discloses arranging sensors such that viewpoints are not
strictly coincident, which one skilled in the art would realize
creates gaps or overlaps. See, e.g., Lelong 7:3–15. We find
that, in view of the combined teachings of Lelong and Uehira, it
would have been within the capability of a skilled artisan in the
field of optical systems to arrange the familiar optical
components by placing multiple sensors with respect to one
another and a reflective area to produce “at least one blind
region that encompasses at least a portion of an edge of a
reflective area and that lies between the two portions of the two
individual fields of view.”
Decision 16.
Because the new evidence submitted by Patent Owner fails to
consider the teachings of Lelong on which our rejection relied, the new
evidence does not persuasively overcome the rejection.
With respect to the evidence of secondary considerations (see the
Nalwa Declaration), the Examiner found that the evidence should be given
little weight because “it lacks a nexus with the merits of the claimed
invention.” Examiner’s Determination 6. I am persuaded that the new
evidence does not outweigh the conclusion that claims 1–39 would have
been obvious over Lelong and Uehira. The evidence is not tied to the claim
limitations. See In re Huang, 100 F.3d 135, 139–40 (Fed. Cir. 1996). See
also In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen,
30 F.3d 1475, 1482 (Fed. Cir. 1994) (Evidence of commercial success of
articles not covered by the claims subject to the obviousness rejection was
not probative of nonobviousness).
Accordingly, after considering the evidence of record, both for and
against a conclusion of obviousness, I remain of the opinion that claims
1–39 would have been obvious. In particular, I remain of the opinion that:
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[I]t would have been within the capability of the ordinarily
skilled artisan to arrange the familiar optical elements taught by
Lelong and Uehira such that two sensors having substantially
similar viewing directions produce images that appear to
originate from offset viewpoints by placing them at different
distances from a reflective surface that redirects their individual
fields of view toward the same scene.
Decision 14–15.

PATENT OWNER:
Joseph L. Lazaroff
LAW OFFICES OF JOSEPH L. LAZAROFF
16 Yarmouth Road
Rowayton, CT 06853-1844

THIRD-PARTY REQUESTER:

WONG, CABELLO, LUTSCH, RUTHERFORD & BRUCCULERI, LLP
20333 SH 249 6th Floor
Houston, TX 77070