Semiconductor Energy Laboratory Co., Ltd.

Patent Trials and Appeals Board

Mar 17, 2022

2021001327 (P.T.A.B. Mar. 17, 2022)

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. 16/361,284 03/22/2019 Shigeru TAMAKI 12732-1352003 4784 26171 7590 03/17/2022 FISH & RICHARDSON P.C. (DC) P.O. BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER AMINI, JAVID A ART UNIT PAPER NUMBER 2613 NOTIFICATION DATE DELIVERY MODE 03/17/2022 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): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SHIGERU TAMAKI and TADAAKI MAEKOYA ________________ Appeal 2021-001327 Application 16/361,284 Technology Center 2600 ________________ Before JASON V. MORGAN, MICHAEL J. ENGLE, and PHILLIP A. BENNETT, Administrative Patent Judges. MORGAN, 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 1-7. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Semiconductor Energy Laboratory Co., Ltd., as the real party in interest. Appeal Br. 1. Appeal 2021-001327 Application 16/361,284 2 SUMMARY OF THE DISCLOSURE Appellant’s claimed subject matter relates to moving a “display position of an image . . . in accordance with positional information of a display device having a curved display surface.” Abstr. REFERENCES The Examiner relies on the following references (only the first named inventor of each reference is listed): Name Reference Date Steffens US 6,301,370 B1 Oct. 9, 2001 Paoletti US 2013/0050395 A1 Feb. 28, 2013 REJECTIONS The Examiner rejects claims 1-7 as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Citation 1 102(a)(1) Steffens Final Act. 3 2-7 103 Steffens, Paoletti Final Act. 4-5 ANALYSIS Claims 1-4 Claim 1 is reproduced below (disputed limitations emphasized and bracketing added). 1. [1] A display device comprising: [2] a first camera portion configured to capture an image of a face of a user of the display device; and [3] a display portion configured to display an image in a display position determined based on a position of the face of Appeal 2021-001327 Application 16/361,284 3 the user in the captured image and an area of the face of the user in the captured image. Appeal Br. 8 (Claims App.). In rejecting claim 1 as anticipated, the Examiner finds that Steffens, which is directed to face recognition from video images, teaches [1] a display device that includes [3] a display portion configured to display an image determined based on a position of the face of a user in a captured image and an area of a face of the user in the captured image. Final Act. 3 (citing Steffens 1:40-67, Fig. 9). The Examiner also finds that Steffens inherently includes [2] a camera with a display to capture the video images. Ans. 6 (citing Steffens Fig. 3). Appellant does not dispute that Steffens discloses “display[ing] an image in a display position determined based on a position of [a] face of [a] user in [a] captured image and an area of the face of the user in the captured image”-a finding supported by Steffens’ disclosure that a “detected object may be sized and centered within the bound portion of the image such that the detected object has a predetermined size and location.” Steffens 1:62-64. Rather, Appellant contends that Steffens fails to disclose such positioning on “a display device[] that itself includes a camera which is configured to capture the very image of the display device user that is then used to determine where to position the image on the display.” Appeal Br. 5. In particular, Appellant argues that “Steffens fails to disclose a display device that includes a first camera portion . . . and a display portion.” Id. at 2. Appellant further submits that the Examiner has not shown that “the display device disclosed by Steffens would have inherently comprised a camera.” Reply Br. 3. Appeal 2021-001327 Application 16/361,284 4 We agree with Appellant that the Examiner errs. Steffens’ processing of video images to recognize faces does not require that the display on which such images are displayed (sized and centered) also include a first camera portion that captures the images. As Appellant correctly notes, Steffens discloses operating on a TIFF image-data that can be acquired remotely before being provided to the system on which the data is processed for display. Appeal Br. 4; Final Act. 3 (citing, e.g., Steffens Fig. 9). Furthermore, the Examiner’s citation (Ans. 6 (citing Steffens Fig. 3)) to Steffens’ disclosure of “a series of images for showing detection, finding, and identification processes of [a] recognition process” (Steffens 2:28-29) does not show that any image was captured by a camera on the system displaying the images. Therefore, the Examiner’s findings do not show that Steffens discloses all of the limitations of recitations [1]-[3]. New Ground of Rejection Although Steffens by itself does not disclose all the limitations of the disputed recitations, Paoletti-which the Examiner relied upon for claims 2- 7 but not claim 1-teaches a video-conferencing device (display device) comprising both a display built into a housing (a display portion) and a camera built into the housing (a camera portion). Paoletti Abstr., Fig. 1, Claim 1. Paoletti also teaches performing face recognition and “replac[ing] face data of the detected face with face data stored in the memory in accordance with the specific identity of the user to enhance and transmit . . . an image of the detected face captured under low light or uneven light conditions.” Id. ¶ 15, Claim 1. Replacing the detected face data in Paoletti’s video-conference device in the manner taught by Steffens-i.e., sizing and centering the replacement Appeal 2021-001327 Application 16/361,284 5 face data within the bound portion of the detected face-would have been an obvious modification to maintain the replacement face data within the facial region of the detected face (Steffens 1:67-2:1), thus furthering Paoletti’s goal of “transmit[ting] approximately continuous video images of the user’s face during the video conference” (¶ 22 (emphasis added)), even under low light or uneven light conditions. Further, displaying an image captured by Paoletti’s camera on Paoletti’s display portion (e.g., as one of the two participants shown in Paoletti’s Figure 1) would have been obvious so that the user of Paoletti’s video-conferencing device knows how his or her image is being transmitted, particularly under low light or uneven light conditions in which replacement face data is used. Paoletti ¶ 15. Therefore, the combination of Steffens and Paoletti teaches or suggests all of the recitations of claim 1. Conclusion (claims 1-4) Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 102(a)(1) rejection of claim 1 as being anticipated by Steffens. Instead, we enter a new ground of rejection under 35 U.S.C. § 103 of claim 1 as being obvious over the combination of Steffens and Paoletti. Appellant does not show error in the Examiner’s further findings with respect to claims 2-4. Appeal Br. 6. Rather, Appellant merely argues Paoletti fails to cure the noted deficiency of Steffens in claim 1. Id. For the reasons discussed above, however, we conclude in a new ground of rejection that Paoletti does cure the noted deficiency of Steffens in claim 1. Therefore, for the obviousness of dependent claims 2-4 over the combination of Steffens and Paoletti, we reverse the Examiner’s rejection, which relied on the anticipation of independent claim 1 over Steffens, and enter a new Appeal 2021-001327 Application 16/361,284 6 ground of rejection under 35 U.S.C. § 103 of claims 2-4 instead relying on the obviousness of the recitations of claim 1 over Steffens and Paoletti for the reasons discussed above. Claims 5-7 Claim 5, which is representative with respect to claims 5-7, is reproduced below (disputed limitations emphasized and bracketing added). 5. A display device comprising: a first camera portion configured to capture an image of a face of a user of the display device; and [4] a display portion configured to display an image in a display position determined based on a position of the face of the user in the captured image and not based on an area of the face of the user in the captured image, wherein the display device is a wearable device. Appeal Br. 8-9 (Claims App.). The Examiner rejects claim 5 as obvious over Steffens and Paoletti for “similar reasons as set forth [with respect to] claims 1 and 2.” Final Act. 5; Ans. 7. Appellant contends the Examiner errs because unlike recitation [3] of claim 1, which includes a determination “based on . . . an area of the face of the user in the captured image,” recitation [4] of claim 5 includes a determination “not based on an area of the face of the user in the captured image” (emphasis added). Appeal Br. 5-6; Reply Br. 4-5. We agree with Appellant that the Examiner errs. As Appellant correctly notes, all words in a claim must be considered when determining whether a claimed invention is novel and nonobvious. Appeal Br. 7 (citing MPEP § 2143.03). This includes negative limitations, which are permissible. Id. (citing MPEP § 2173.05(i)). The Examiner’s reliance on analysis relating Appeal 2021-001327 Application 16/361,284 7 to the positive limitation in recitation [3] of claim 1 does not show that the negative limitation in recitation [4] of claim 5 would have been obvious. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 5, and claims 6-7, which depend therefrom. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1 102(a)(1) Steffens 1 1 103 Steffens, Paoletti 1 2-7 103 Steffens, Paoletti 2-7 2-4 Overall Outcome 1-7 1-4 FINALITY AND RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Rule 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.” Rule 37 C.F.R. § 41.50(b) also provides that Appellant, 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 prosecution will be remanded to the examiner. . . . Appeal 2021-001327 Application 16/361,284 8 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2019). REVERSED; 37 C.F.R. § 41.50(b)