Ex Parte Eckhoff et alDownload PDFPatent Trial and Appeal BoardOct 31, 201612655194 (P.T.A.B. Oct. 31, 2016) 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. 12/655,194 12/23/2009 Philip Eckhoff 1108-009-002A-000000 1016 5209 138951 7590 02/14/2017 Advent, LLP/INTELLECTUAL VENTURES The Advent Building 17838 Burke Street Suite 200 Omaha, NE 68118 EXAMINER MA, CALVIN ART UNIT PAPER NUMBER 2693 NOTIFICATION DATE DELIVERY MODE 02/14/2017 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): u spto @ adventip .com sloma@adventip.com ISFDocketInbox@intven.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PHILIP ECKHOFF, WILLIAM GATES, PETER L. HAGELSTEIN, RODERICK A. HYDE, MURIEL Y. ISHIKAWA, JORDIN T. KARE, ROBERT LANGER, ERIC C. LEUTHARDT, EREZ LIEBERMAN, NATHAN P. MYHRVOID, MICHAEL SCHNALL-LEVIN, CLARENCE T. TEGREENE, and LOWELL L. WOOD JR. Appeal 2015-004913 Application 12/655,194 Technology Center 2600 Before JEAN R. HOMERE, DEBRA K. STEPHENS, and JEFFREY S. SMITH, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE In papers filed December 19, 2016, Appellants request a rehearing under 37 C.F.R. § 41.52 from the Decision on Appeal (“Decision”) of the Patent Trial and Appeal Board (“Board”), dated November 2, 2016. In the Decision, we affirmed the Examiner’s rejection of claims 1, 6, 8, 10, 17, 22, Appeal 2015-004913 Application 12/655,194 26,34,41,50-52,97, 102, 104, 106, 111, 112, 117-124, 126, 127, 130, 131, 135, 137, 139, 140, 142, 146, 147, 168, 169, 172, 173, and 181. Dec. 8. ANALYSIS In the Request for Rehearing (“Req. Reh’g”), Appellants allege the Board erred by overlooking the arguments presented in the Reply Brief with regards to claims 34, 41, 50, 51, 111, 112, and 121. Req. Reh’g 4. According to Appellants, “[bjecause the Reply Brief was filed after the Answer, the Examiner could not have rebutted the arguments set forth in the Reply Brief.” Id. Consequently, Appellants submit these arguments remain unaddressed by the Examiner or the Board Opinion, which merely adopted the Examiner’s findings and conclusions with regards to the cited claims without providing any detailed reasoning. Id. The arguments are not persuasive. As noted in the original Decision, the Examiner rebutted in the Answer by a preponderance of the evidence, each argument separately raised by Appellants in the Appeal Brief. Dec. 8. Therefore, any new arguments that Appellants may have provided in the Reply Brief are not timely, and are thereby waived. More specifically, Appellants did not explain why, nor was it apparent that the arguments were necessitated by a new point in the Answer or any other circumstance constituting “good cause” for its belated presentation. See 37 C.F.R. § 41.41(b)(2) (2016). Nonetheless, in the interest of fostering compact prosecution, we have amended the original Decision as follows: 2 Appeal 2015-004913 Application 12/655,194 Claim 34 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of a user cropping an image to exclude an individual therefrom teaches or suggests “cease providing the display to the individual based on an identified characteristic of a second individual,” as required by the claim. Req. Reh’g 5—6; Reply Br. 10-11 (quoting Ans. 6—7). This argument is not persuasive. Goldberg discloses an interface for allowing a user to modify the image of a person that has been identified through facial recognition. Fig. 31; Final Act. 7. In particular, upon the person being identified in a displayed image, the user is given the option of cropping any part of the identified person or sending the image to the identified person. Goldberg 37:3—23; Final Act. 7. That is, the disclosed interface provides the display of an image to the user (i.e., a first individual). Then, upon the user cropping an identified individual (a second individual) in the displayed image, the initial image has been modified based on the characteristic of the second individual. Consequently, because the initial image is modified, the display thereof is ceased from being provided to the first individual based on the identified characteristic of the second individual. Accordingly, we find no error in our initial decision to sustain the Examiner’s rejection of claim 34. Claim 41 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s 3 Appeal 2015-004913 Application 12/655,194 disclosure of a videotape recorder that documents a patron teaches or suggests “documenting the provision of the content of the display for the individual,” as required by the claim. Req. Reh’g 6—7; Reply Br. 12—13 (quoting Ans. 7). This argument is not persuasive. As correctly noted by the Examiner, Goldberg discloses using a recorder for storing displayed contents (e.g., screenshots) for a patron/user of a theme park. Ans. 7, Goldberg 37:17—33, Fig. 2. We do not agree with Appellants that the cited disclosure merely teaches documenting the patron on a ride. Req. Reh’g. 7. The cited disclosure also teaches documenting screenshots including the patron and any other content displayed on the screen at the time the picture is captured (documenting the provision of the content of the display) so that the picture can be subsequently made available to the patron for purchase (for the individual). Goldberg 37:17—33, 39-42. Accordingly, we find no error in our initial decision to sustain the Examiner’s rejection of claim 41. Claim 50 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of accepting a credit card as a payment teaches or suggests “a payment/charge associated with the individual is a basis of content displayed to an individual, as required by the claim.” Req. Reh’g 7—8; Reply Br. 12— 13 (quoting Ans. 8). In particular, Appellants argue that the Examiner failed to show that the alleged payment characteristic disclosed in Goldberg is determinative of the content of the display. Req. Reh’g 8. This argument is not persuasive. Goldberg discloses an interface for allowing a user to 4 Appeal 2015-004913 Application 12/655,194 purchase a screenshot displaying a patron on a ride. Goldberg Fig. 2; Final Act. 18—19; Ans. 7—8. In particular, upon the patron’s credit card being identified, the screenshot associated therewith is an image displayed to the patron for subsequent purchase. Goldberg 15:1—25, 21:10-25, 49-51; Final Act. 18—19; Ans. 7—8. We, therefore, agree with the Examiner that the identified credit card serves as a basis for displaying to the user/patron a screenshot associated therewith. Ans. 8. Accordingly, we find no error in our initial decision to sustain the Examiner’s rejection of claim 50. Claim 51 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of accessing an image or classifying a data stream teaches or suggests “selecting the individual based a location of the individual”, as required by the claim. Req. Reh’g 8—9; Reply Br. 13—14 (quoting Ans. 8). Further, Appellants argue that the combination of Sharma and Goldberg does not teach or suggest the disputed limitations. Id. Although Appellants persuasively argue that the portion of Goldberg relied upon by the Examiner does not teach or suggest the disputed limitations, we do not agree with the proposed combination of Sharma and Goldberg is similarly deficient. As noted in the initial Decision, Sharma’s disclosure of a DBR performing a face analysis when the individual comes within view of a camera teaches selecting the individual based on the orientation thereof. Dec. 4. Likewise, because the individual is located in a retail store, such selection of the individual is also based upon the individual’s location within the store. 5 Appeal 2015-004913 Application 12/655,194 Sharma Abstr. Accordingly, claim 51 is unpatentable over the combination of Sharma and Goldberg. Claim 111 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of selecting content to be printed on attire teaches or suggests “means for selecting the content for the individual at least based on an attire of the individual,” as required by the claim. Req. Reh’g 10-11; Reply Br. 20—21 (quoting Ans. 12—13). This argument is not persuasive. Goldberg discloses using a fabric printer for rendering selected image content on a physical medium (T-shirt, or cap) for the benefit of a theme park patron. Goldberg 37:56—60; Ans. 12—13. It would have been obvious to one of ordinary skill in the art that a theme park vendor would print a captured image or a modified version thereof on a T-shirt or a cap for subsequent sale to the patron based on similar attire (e.g., T-Shirt or cap) being worn by the patron while at the theme park. The ordinarily skilled artisan in marketing would appreciate that selecting content suitable to be printed on a similar attire being worn by the patron would be an effective sale pitch to the patron. Consequently, claim 111 is not patentable over the combination of Sharma and Goldberg. Claim 112 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of a user cropping an image to exclude an individual therefrom 6 Appeal 2015-004913 Application 12/655,194 teaches or suggests “cease providing the display to the individual based on an identified attire of the individual,” as required by the claim. Req. Reh’g 11—12; Reply Br. 22—23 (citing Ans. 13—14). This argument is not persuasive. As discussed above with respect to claim 34, Goldberg teaches or suggests ceasing the display to a first individual based on the identified characteristic of the second individual. Further, as correctly noted by the Examiner, Goldberg discloses that the attire of an individual may be used as a basis or identifying the individual in a picture, as well as for excluding the individual therefrom. Ans. 13—14 (citing Goldberg col. 19:18—50). Therefore, we agree with the Examiner that Goldberg teaches or suggests ceasing a display to an individual based on the attire of another individual in an image. Id. Accordingly, we find no error in our initial decision to sustain the Examiner’s rejection of claim 112. Claim 121 Appellants argue that the Board Opinion did not demonstrate any evidence or reasoning set forth by the Examiner to show how Goldberg’s disclosure of displaying a selectable icon teaches or suggests “means for providing a display having directions to a location for the individual”, as required by the claim. Req. Reh’g 12—13; Reply Br. 23—24 (citing Ans. 14). This argument is not persuasive. As correctly noted by the Examiner, Goldberg discloses an interface containing a button to facilitate a user to email an image to an individual identified therein. Ans. 14 (citing Goldberg 37:18—21). We agree with the Examiner that the mechanism by which the disclosed interface allows the user to get in touch with an individual via e- 7 Appeal 2015-004913 Application 12/655,194 mail teaches or suggests directions displayed on the interface to locate or reach the individual albeit via electronic correspondence. Ans. 14. Accordingly, we find no error in our initial decision to sustain the Examiner’s rejection of claim 121. CONCLUSION In view of the foregoing discussion, we grant Appellants’ Request for Rehearing. We have modified the Decision by expanding upon our original analysis, and by supplementing the rationales provided by the Examiner in the Answer. Consequently, this Decision on Request for Rehearing has substantially modified the original Decision as to become a new Decision. Pursuant to 37 C.F.R. §§ 41.50(b) and 41.52(a)(1), we treat this new Decision as containing a new ground of rejection. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 8 Appeal 2015-004913 Application 12/655,194 REQUEST FOR REHEARING-GRANTED 37 C.F.R. $ 41.50(b) 9 Copy with citationCopy as parenthetical citation