Ex Parte Jetha et al

Patent Trial and Appeal Board

Mar 1, 2016

13358147 (P.T.A.B. Mar. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/358,147 01125/2012
23446 7590 03/03/2016
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Zeenat J etha
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
24034US06 7046
EXAMINER
HARRISON, CHANTE E
ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
03/03/2016 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZEENAT JETHA, ANDREW CARLISLE, ANDREW SKLERS,
DAVID J.P. BAAR, and GARTH B.D. SHOEMAKER
Appeal2014-003050
Application 13/358,147
Technology Center 2600
Before ALLEN R. MacDONALD, NABEEL U. KHAN, and
AMBER L. HAGY, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-003050
Application 13/358,14 7
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 18-37. Final Act. 1. Claims 1-17 have been
cancelled. Id. at 2. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claim 18 under appeal reads as follows (emphasis added):
18. A method comprising:
establishing an appearance of a lens, by a data processing system, for
a region-of-interest in a digital image of a map, the appearance
of the lens having a focal region with a magnification for the
region-of-interest at least partially surrounded by a shoulder
region across which a magnification varies to provide a
transition from the focal region to regions outside the
appearance of the lens; and
filtering search results, by the data processing system, to limit a search
to the search results that correspond to geographic locations that
are included within the appearance of the lens.
Rejection
The Examiner rejected claims 18-37 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Jouppi (US 6,549,215 B2;
Apr.15, 2003) and Abramson et al. (US 2011/0161861 Al; Jun. 30, 2011). 1
1 Separate patentability is not argued for claims 19-37. Except for our
ultimate decision, these claims are not discussed further herein.
2
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Application 13/358,14 7
Appellants ; Contentions
1. Appellants contend that the Examiner erred in rejecting claim 18
under 35 U.S.C. § 103(a) because:
Jouppi's foveal video does not teach, suggest, or disclose "a
shoulder region across which a magnification varies." Instead,
Jouppi's foveal video discloses only blending high and low
(and optionally medium) resolution images.
The Advisory Action justifies conflating "magnification"
with "resolution" based essentially on the following logic. The
specification of the present application discloses that the level
of detail corresponds to the resolution. Jouppi discloses
varying resolution. Consequently, the Advisory Action
concludes that J ouppi discloses magnification.
App. Br. 9--10.
2. Appellants also contend that the Examiner erred in rejecting claim
18 under 35 U.S.C. § 103(a) because:
The Final Office Action acknowledges that Jouppi fails to
disclose "filtering search results, by the data processing system,
to limit a search to the search results that correspond to
geographic locations that are included within the appearance of
the lens." Instead, Abramson is relied upon. The Applicant
respectfully disagrees that this recitation is disclosed by
Abramson.
App. Br. 10.
Abramson does not teach, suggest, or otherwise disclose
''filtering search results, by the data processing system, to limit
a search to the search results that correspond to geographic
locations that are included within the appearance of the lens."
Instead, Abramson discloses only repositioning the magnifier
65 after a user selects an item or queries for the location of a
nearest item.
App. Br. 12.
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Application 13/358,14 7
3. Appellants also contend that the Examiner erred in rejecting claim
18 under 35 U.S.C. § 103(a) because:
In justifying the combination of Jouppi and Abramson,
the Final Office Action, at page 4, states:
It would have been obvious to one of skill in
the art to combine Abramson's selective
digital imagery that is displayed magnified
with Jouppi's captured digital imagery that
is displayed with decreasing magnification
from the image center toward the image
edges because Jouppi processes video
images (FIG. 4; col. 6-7, II. 59-19) and
Abramson (Para 7) provides a view to the
user that mimics what the user would see if
the user were actually located in the place of
interest. Thus, the combination of known
elements provide predictable results.
The Applicant, respectfully, disagrees with the factual
premises of this rationale. First, the Actions rely on Jouppi's
foveal video, which does not show decreasing magnification.
Instead, as discussed above, Jouppi's foveal video shows
varying resolution, not magnification. Second, Abramson does
not provide a view to the user that mimics what the user would
see if the user were actually located in the place of interest.
Instead, Abramson discloses only displaying a bird's eye view
of a map region. See, e.g., FIGS 3-9. [Footnote: Abramson
does state, at i-17, that the maps are presented "similar in essence
to actually walking through the area of interest." Abramson's
use of the phrase "in essence" recognizes that the map view is
not literally as stated. Abramson discloses only bird's eye
views, and never a street level view.]
Reply Br. 14.
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Application 13/358,14 7
4. Appellants also contend that the Examiner erred in rejecting claim
18 under 35 U.S.C. § 103(a) because:
Furthermore, the above-quoted rationale provides no
explanation as to why or how one with ordinary skill in the art
would have combined Jouppi and Abramson. The rationale for
combining J ouppi and Abramson only states that J ouppi
processes video images and Abramson mimics what the user
would see if the user were actually located in the place of
interest. By merely characterizing Jouppi and Abramson, no
prima facie case of obviousness has been made.
Reply Br. 15.
5. Appellants further contend that the Examiner erred in rejecting
claim 18 under 35 U.S.C. § 103(a) because:
"The mere fact that the references can be combined or modified
does not render the resultant combination unless the results
would have been predictable to one of ordinary skill in the art."
See MPEP § 2143.0l(III) (citing KSR, 550 U.S. at 417).
In this case, there have been no articulated reasons or
findings of fact that demonstrate that one with ordinary skill in
the art would have had a reasonable expectation of success
when combining Jouppi and Abramson. Instead, the Final
Office Action states, without explanation, that "the combination
of known elements provide predictable results."
App. Br. 15-16.
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Appeal2014-003050
Application 13/358,14 7
Issues on Appeal
Did the Examiner err in rejecting claim 18 as being obvious?
ANALYSIS
As our analysis below differs from the Examiner's, we designate our
analysis as a new ground of rejection of claims 18-37 under 35 U.S.C.
§ 103(a).
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
disagree with Appellants' conclusions. We concur with the conclusions
reached by the Examiner.
As to Appellants' above contention 1, we disagree. Contrary to
Appellants' argument, Jouppi suggests a shoulder region across which a
magnification varies. Jouppi's figures 14--15 and column 11, lines 5-20,
suggest that magnification (the inverse of scale) can vary outside a center
portion; and figure 19 and column 12, lines 20-46, suggest with foveal video
that scaling can be applied in addition to resolution adjustments.
As to Appellants' contention 2, we disagree. Contrary to Appellants'
argument, Abramson suggests limiting a search to the search results that
correspond to geographic locations that are included within the appearance
of the lens.
Once the user moves the magnifier 65, the Shockwave
application displays item information 160 relating to the new
location in the item information portion which corresponds to
the new position of the magnifier 65.
Abramson i-f 87.
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Appeal2014-003050
Application 13/358,14 7
As to Appellants' contention 3, we disagree. First, Appellants repeat
their magnification argument. We disagree for the reasons above. Second,
we disagree with Appellants' conclusory assertion that a bird's eye view is
not "what the user would see if the user were actually located in the place of
interest." Such unsupported attorney argument is entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
As to Appellants' contention 4, we disagree. We conclude the
Examiner provided more than sufficient reasoning for a prima facie case of
obviousness.
As this court has repeatedly noted, "the prima facie case is
merely a procedural device that enables an appropriate shift of
the burden of production." Hyatt v. Dudas, 492 F.3d 1365,
1369 (Fed.Cir.2007) (citing In re Oetiker, 977 F.2d 1443, 1445
(Fed.Cir.1992)). See also In re Piasecki, 745 F.2d 1468, 1472
(Fed.Cir.1984). The Patent and Trademark Office ("PTO")
satisfies its initial burden of production by "adequately
explain[ing] the shortcomings it perceives so that the applicant
is properly notified and able to respond." Hyatt, 492 F.3d at
1370. In other words, the PTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies 35
U.S.C. § 132, in "notify[ing] the applicant ... [by] stating the
reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the]
application." 35 U.S.C. § 132. That section "is violated when a
rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection."
Chesterv. Miller, 906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Section 132 merely ensures that an applicant at least be
informed of the broad statutory basis for the rejection of his
claims, so that he may determine what the issues are on which
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Application 13/358,14 7
he can or should produce evidence." Chester, 906 F.2d at 1578
(internal citation omitted). As discussed above, all that is
required of the office to meet its prima facie burden of
production is to set forth the statutory basis of the rejection and
the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must "notify the applicant," "stating the reasons for
such rejection," "together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application." 35 U.S.C. § 132.
In re Jung, 637 F.3d at 1363. Notwithstanding our conclusion, it appears
Appellants are actually arguing that, in light of Appellants' arguments as to
deficiencies in Examiner's fact finding, the Final Action fails to state
sufficient reasoning with a rational underpinning to reach a final conclusion
of obviousness. While we see some merit as to this argument, Appellants
overlook that at i-f 83 Abramson states: "The magnifier 65 used in the
preferred embodiment is circular in shape and resembles a conventional
magnifying glass.'' (Emphasis added.) An artisan would know that such a
conventional magnifying glass has a decreasing magnification at its edges.
As discussed above, Jouppi suggests that, in a video system, magnification
can vary across an image area. We conclude that Abramson is suggestive of
the invention of claim 1, and J ouppi is suggestive of how to implement the
claimed invention.
As to Appellants' contention 5, we disagree. Contrary to Appellants'
argument, our analysis above demonstrates that the results would have been
predictable to one of ordinary skill in the art. Additionally, Appellants have
not presented evidence sufficient to show that combining the prior art was
"uniquely challenging or difficult for one of ordinary skill in the art" or
"represented an unobvious step over the prior art." Leapfrog Enters., Inc. v.
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Appeal2014-003050
Application 13/358,14 7
Fisher-Price, Inc., 485F.3d1157, 1162 (Fed. Cir. 2007) (citingKSRint?
Co. v. Teleflex Inc., 550 U.S. 398, 418--419 (2007)).
37 C.F.R. § 41.50(b)
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 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 Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 ....
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 18-37 as being
unpatentable under 35 U.S.C. § 103(a).
(2) Claims 18-37 are not patentable.
DECISION
The Examiner's rejection of claims 18-37 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
37 C.F.R. § 41.50(b)
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