Magic Leap, Inc.

Patent Trials and Appeals Board

Nov 3, 2020

2019002889 (P.T.A.B. Nov. 3, 2020)

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.
14/707,581 05/08/2015 Rony Abovitz ML.20020.321 5338
132471 7590 11/03/2020
Vista IP Law Group, LLP (Magic Leap, Inc.)
2160 Lundy Ave., Ste. 230
San Jose, CA 95131
EXAMINER
MARTELLO, EDWARD
ART UNIT PAPER NUMBER
2613
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
docketing@viplawgroup.com
sp@viplawgroup.com
vlm@viplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONY ABOVITZ, BRIAN T. SCHOWENGERDT, and
MATTHEW D. WATSON
Appeal 2019-002889
Application 14/707,581
Technology Center 2600
Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8, 9, 13, 14, and 17–20. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest as
Magic Leap, Inc. Appeal Br. 2.
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Application 14/707,581

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CLAIMED SUBJECT MATTER
The claims are directed to facilitating surgery with a head-worn
display device for displaying virtual content. Claim 1 (Appeal Br. 14),
reproduced below, is illustrative of the claimed subject matter:
1. A method for facilitating surgery using a display device
worn on the head of a first user, comprising:
the display device receiving patient data relating to a
surgical procedure on a patient;
the display device tracking a head pose of a first user
relative to a physical location;
the display device rendering virtual content comprising a
virtual three-dimensional (3D) anatomical model based on the
received patient data and the tracked head pose of the first user;
and
the display device displaying the virtual content while
worn on the head of the first user, such that the virtual 3D
anatomical model, when viewed by the first user, appears to be
fixed at the physical location, whereby the virtual 3D anatomical
model may be viewed by the first user from any angle or
orientation merely by walking around the physical location.
REJECTIONS
Claims 1–4, 13, 14, and 17–20 stand rejected under 35 U.S.C. § 103
as unpatentable over the combination of Tang (US 2008/0088529 A1,
published Apr. 17, 2008), Ross et al. (US 6,608,628 B1, issued Aug. 19,
2003) (“Ross”), and Rotschild et al. (US 2011/0128555 A1, published June
2, 2011) (“Rotschild”). Final Act. 3.
Claims 5 and 6 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Tang, Ross, Rotschild, and Ohsuga et al. (US
6,244,987 B1, issued June 12, 2001) (“Ohsuga”). Final Act. 7–8.
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Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Tang, Ross, Rotschild, and Iaquinto (US
2006/0181482 A1, issued Aug. 17, 2006). Final Act. 9–10.
ANALYSIS
In rejecting independent claim 1, the Examiner found that Tang
teaches “a display device worn on the head of a first user,” “the display
device rendering virtual content,” and “the display device displaying the
virtual content while worn on the head of the first user.” See Final Act. 3.
The Examiner further found that Ross teaches “receiving patient data
relating to a surgical procedure on a patient” and “rendering virtual content
“comprising a virtual three-dimensional (3D) anatomical model based on the
received patient data.” See id. at 4. The Examiner then found that Rotschild
teaches “tracking a head pose of a first user relative to a physical location,”
“rendering virtual content comprising a virtual three-dimensional (3D)
anatomical model based on . . . the tracked head pose of the first user,” and
“displaying the virtual content . . . such that the virtual 3D anatomical
model, when viewed by the first user, appears to be fixed at the physical
location, whereby the virtual 3D anatomical model may be viewed by the
first user from any angle or orientation merely by walking around the
physical location.” See id.
Appellant contends that the Examiner erred in combining Rotschild
with Tang and Ross because “the distributed HMD [head-mounted display]
system of Tang/Ross and the centralized system of Rotschild are so
fundamentally different that any teaching in Rotschild is inapplicable to the
system of Tang/Ross.” Appeal Br. 5. In particular, Appellant argues that,
“[a]lthough Rotschild states that it would be desirable to allow users to view
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a three-dimensional volumetric image while walking around the image,”
“Rotschild teaches nothing about HMD’s, and more importantly, does not
teach how to modify an HMD, such that the user can view a three-
dimensional volumetric image at any angle or orientation merely by walking
about a physical location.” Id. at 6.
We agree with Appellant that the Examiner erred. Tang teaches a
head-mounted display that “can be used to view a see-through image
imposed upon a real world view, thereby creating what is typically referred
to as an augmented reality.” Tang ¶ 2. In a surgical setting, “radiographic
data, such as CAT scans or MRI imaging can be combined with the
surgeon’s vision.” Id. Tang’s head-mounted display can use display
architectures such as “liquid crystal display (LCD),” “Organic Light
Emitting Diode (OLED),” “Liquid Crystal: on Silicon (LCoS),” and “Micro-
electro-mechanical (MEM)/Laser display.” Id. ¶¶ 3–6.
Rotschild relates to “a floating-in-the-air user interface.” Rotschild
¶ 312. “[A] viewer can walk around a stage, and watch different faces of a
scene projected on the stage, each face viewable from another viewing
angle, just as when looking at the real, original, scene.” Id. ¶ 313. In an
embodiment, “the stage is an imagery volume in space, in which the
hologram is projected and towards which the viewer is looking.” Id. ¶ 316.
“A hologram on an imagery stage looks like it is floating in the air.” Id. In
operation, Rotschild captures a viewer’s position by “receiving input from a
tracking unit” and “determin[ing] the position of the viewer, and the angle
from which the viewer would have seen the scene, if the scene was in fact on
the stage.” Id. ¶ 530. “[T]he system filters out the data required for creating
a hologram of that portion of the view that was determined . . . to be seen by
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the viewer” (id. ¶ 532), “set[s] a desired refraction index to each of the
active pixels of the SLM [spatial light modulator]” (id. ¶ 533), and “the
SLM is illuminated to generate the object hologram” (id. ¶ 535).
The Examiner has not explained how one of ordinary skill in the art
would have combined Rotschild with Tang. The Examiner reasons that one
would have combined the cited teachings “for the benefit of allowing users
to view three-dimensional volumetric images including floating-in-air
medical anatomical images in a full 360 degree viewing space with hands-
free, three dimensional immersive augmented real-time display.” Final Act.
5. But this rationale does not account for the fact that Rotschild’s system that
uses a spatial light modulator to generate a hologram is a different
technology than Tang’s head-mounted display. The Examiner’s combination
begs the question of how one would have updated Tang’s head-mounted
display, given Rotschild’s viewer tracking capability, so that “the virtual 3D
anatomical model may be viewed by the first user from any angle or
orientation merely by walking around the physical location,” as recited in
claim 1. We see no evidence on the record that using Rotschild’s viewer
tracking capability to update Tang’s head-mounted display would have been
obvious to a skilled artisan.
The Examiner asserts that while Rotschild provides “many examples
using hologram display devices, this teaches and suggests the idea of
reproducing the same results with other 3D viewing technologies such as
head mounted devices.” Ans. 5. The Examiner further asserts that “[t]hese
concepts appear in many patent and non-patent literature documents, often
directed to gaming, aircraft and automobile simulators, aircraft maintenance
and the like.” Id. The Examiner, however, has not pointed to any specific
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teaching or suggestion to combine Rotschild’s viewer tracking capability
from a holographic display context with Tang’s head-mounted display. Nor
has the Examiner specifically explained why it would have been within the
ordinary creativity of a skilled artisan to make this combination.
For these reasons, on the record before us, we are persuaded that the
Examiner erred in finding that the combination of Tang, Ross, and Rotschild
teaches or suggests the disputed limitation of independent claim 1.
Because we find it dispositive that the Examiner has not shown by a
preponderance of evidence that one of ordinary skill in the art would have
combined Rotschild with Tang and Ross, we do not address other issues
raised by Appellant’s arguments related to these claims. See Beloit Corp. v.
Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an administrative
agency is at liberty to reach a decision based on “a single dispositive issue”).
Accordingly, we reverse the Examiner’s § 103 rejection of
independent claim 1. We also reverse the § 103 rejections of dependent
claims 2–6, 8, 9, 13, 14, and 17–20, which fall with independent claim 1
from which they depend. Nothing in the Examiner’s separate rejections of
dependent claims 5, 6, 8, and 9 cured the deficiencies noted above.
DECISION
We reverse the Examiner’s decision rejecting claims 1–6, 8, 9, 13, 14,
17–20.
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 13, 14,
17–20
103 Tang, Ross, Rotschild 1–4, 13, 14,
17–20
5, 6 103 Tang, Ross,
Rotschild, Ohsuga
5, 6
8, 9 103 Tang, Ross,
Rotschild, Iaquinto
8, 9
Overall
Outcome:
1–6, 8, 9, 13,
14, 17–20

REVERSED