MAGIC LEAP, INC.Download PDFPatent Trials and Appeals BoardMar 16, 20212019005876 (P.T.A.B. Mar. 16, 2021) 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. 14/707,513 05/08/2015 Rony Abovitz ML.20020.320 8330 132471 7590 03/16/2021 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 03/16/2021 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 2019-005876 Application 14/707,513 Technology Center 2600 ____________ Before NORMAN H. BEAMER, ADAM J. PYONIN, and GARTH D. BAER, Administrative Patent Judges. BAER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2019-005876 Application 14/707,513 2 STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1–16 and 19–22. Appeal Br. 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. BACKGROUND A. The Invention Appellant’s invention is directed to an “AR [augmented reality] retail system and method recognizes user location in a retail establishment, retrieves data corresponding to the retail establishment and generates virtual content relating to the retail establishment based on the retrieved data” and “creates a virtual user interface in a user’s field of view.” Abstract (amended Oct. 31, 2016). Independent claim 1 is representative and reproduced below, with emphasis added to disputed elements: 1. A method for generating a retail experience, comprising: recognizing, by an electronic Augmented Reality (AR) system, a location of a user in a retail establishment; said AR system retrieving data corresponding to the retail establishment; said AR system generating virtual content relating to the retail establishment based on the retrieved data; said AR system creating and rendering a virtual user interface in a field of view of the user and positioning the virtual user interface by tying the virtual user interface to 1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Magic Leap, Inc. as the real party in interest. Appeal Br. 3. Appeal 2019-005876 Application 14/707,513 3 object map points associated with a physical shopping cart in a real world retail location; displaying the virtual content on the virtual user interface of a display device of the AR system, while the user is engaged in retail activity in the retail establishment; said AR system moving the virtual user interface in response to a movement of the physical shopping cart in the real world retail location by rendering the virtual user interface at a position that is tied to the object map points associated with the physical shopping cart in the real world retail location after movement thereof such that the position of the virtual user interface relative to the physical shopping cart in the real world retail location remains unchanged; receiving user input in a form of a user gesture; and said AR system generating additional virtual content responsive to the user gesture, wherein the user gesture comprises hand motions or hand positions and does not involve a user’s hand contacting a physical interface or physical input device. Appeal Br. 17 (Claims App.). B. The Rejections on Appeal The Examiner rejects claim 1 provisionally under nonstatutory double patenting as being unpatentable over claim 1 of Ser. No. 14/707,640.2 The Examiner rejects claims 1–16 and 19–22 under 35 U.S.C. § 103 as being unpatentable over Signorelli (US 2014/0214547 A1; July 31, 2014), 2 Appellant does not contest the provisional double patenting rejection and “will consider filing a Terminal Disclaimer . . . when the claims of the present application are in condition for allowance except for the double patenting rejection.” Appeal Br. 10. Accordingly, this rejection is summarily affirmed. Appeal 2019-005876 Application 14/707,513 4 Swartz (US 2007/0210155 A1; Sept. 13, 2007), and Geisner (US 2013/0095924 A1; Apr. 18, 2013). Final Act. 3.3 ANALYSIS A. Obviousness Rejection of Independent Claim 1 Appellant argues that Swartz’s portable terminal is clearly a physical terminal “mounted on a shopping cart.” On the other hand, independent claim 1 requires various method limitations involving a “an AR system creating and rendering a virtual user interface” ( e.g., positioning the virtual user interface by tying the virtual user interface to object map points associated with a physical shopping cart in a real world retail location, and moving the virtual user interface in response to a movement of the physical shopping cart in the real world retail location by rendering the virtual user interface at a position that is tied to the object map points associated with the physical shopping cart in the real world retail location). Appeal Brief 13, comparing Swartz Fig. 7A to Fig. 66a (emphasis in original). Appellant contends that “[m]ounting a physical display terminal presents completely different problems and involves completely different technological solutions compared to an AR system’s interactions with a virtual user interface.” Appeal Br. 14. We agree. The Examiner finds Signorelli teaches “a[n] augmented user interface in a physical retail setting with various assisting and or marketing pitches” and a user interface that “is anchored to the user which can be tied all the way to Earth based coordinates.” Ans. 4, citing Signorelli Fig. 14. The Examiner further finds that Swartz teaches 3 While the heading of the rejection omits reference to claims 21 and 22, these claims are included in the rejection. See Final Act. 12–13. Appeal 2019-005876 Application 14/707,513 5 positioning the virtual user interface . . . by tying the virtual user interface . . . to object map points . . . associated with . . . a physical shopping cart . . . in a real world application Ans. 8, citing Swartz ¶¶ 198–199, 53, 56, 99–100, 47, 43, 84. The Examiner further finds, and we agree, that Geisner teaches a “virtual user interface” as “recommendations are presented in response to a finger pointing gesture at a menu item displayed [by the near-eye AR display].” Final Act. 6–7, citing Geisner ¶¶ 91, 112 (emphasis added). Appellant’s claimed method produces a “virtual user interface” — that is, a user interface that exists virtually. Both Signorelli and Swartz appear to teach physical interfaces that include virtual elements. With respect to the distinction between an augmented reality user interface and a virtual user interface, the Examiner includes no discussion of Geisner, but instead finds that [i]n the case of the Appellant’s head mounted AR device, the claimed virtual user interface is easily placed or rendered over the physical shopping cart’s removably mounted display terminal as may be easily envisioned by one of ordinary skill in the art. Ans. 10. We agree with Appellant that “the Examiner provides no citation for this bare assertion.” Reply Br. 5. The Examiner’s explanation that arriving at the claimed invention “may be easily envisioned by one of ordinary skill in the art” does not constitute articulated reasoning with rational underpinnings sufficient to justify the legal conclusion of obviousness. See KSR Int’l., Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner’s statement is conclusory, and while it may be possible to modify Geisner’s teaching of a virtual user Appeal 2019-005876 Application 14/707,513 6 interface, in conjunction with Signorelli’s and Swartz’s teachings, to arrive at the claimed invention, the Examiner’s findings are insufficient to do so. Accordingly, we are constrained by the record to reverse the Examiner’s rejection of independent claim 1, and dependent claims 2–16 and 19–22. CONCLUSION In summary: 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-IN-PART Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 Non-statutory double patenting 1 1–16, 19– 22 103 Signorelli, Swartz, Geisner 1–16, 19– 22 OVERALL OUTCOME 1 2–16, 19– 22 Copy with citationCopy as parenthetical citation