Ex Parte 6700711 et alDownload PDFPatent Trials and Appeals BoardSep 29, 201495001876 - (S) (P.T.A.B. Sep. 29, 2014) 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. 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 2 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 3 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 4 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 5 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 6 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 7 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.” Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 2 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 3 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 4 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. Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 5 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 Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 6 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: Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 7 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: Appeal 2016-008299 Reexamination Control 95/001,876 Patent 6,700,711 B2 8 [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 Copy with citationCopy as parenthetical citation