Disney Enterprises, Inc.

Patent Trials and Appeals Board

Jan 12, 2022

2021003600 (P.T.A.B. Jan. 12, 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. 15/429,953 02/10/2017 Michael P. Goslin 45WE-250558 2875 124910 7590 01/12/2022 ESPLIN & ASSOCIATES (Disney) c/o DISNEY ENTERPRISES, INC. 1665 S Rancho Santa Fe Road, Suite C2 San Marcos, CA 92078 EXAMINER MAZUMDER, TAPAS ART UNIT PAPER NUMBER 2616 NOTIFICATION DATE DELIVERY MODE 01/12/2022 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): docketing@esplin.legal PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL P. GOSLIN, ERIC HASELTINE, JOSEPH OLSON, TIMOTHY PANEC, KATHERINE M. BASSETT, and BLADE OLSON Appeal 2021-003600 Application 15/429,953 Technology Center 2600 Before MAHSHID D. SAADAT, ELENI MANTIS MERCADER, and CARL L. SILVERMAN, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-23. We have jurisdiction under 35 U.S.C. § 6(b). 1 An oral hearing was held for this appeal on November 1, 2021. 2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Disney Enterprises, Inc. Appeal Br. 2. Appeal 2021-003600 Application 15/429,953 2 We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to “systems and methods for providing augmented reality experience based on an operation of an object.” See Spec. ¶¶ 1, 24. Claim 1, reproduced below, illustrates the claimed subject matter: 1. A system for providing augmented reality experience based on an operation of an object, the system comprising: a display configured to display an overlay image; a first image sensor configured to generate one or more visual output signals conveying visual information within a field of view of the first image sensor; one or more processors configured by machine readable instructions to: detect the object based on the one or more visual output signals; determine a position, an orientation, or a combination thereof of the object based on the one or more visual output signals; after detecting the object, establish wireless communication with the object; obtain, from the object via the wireless communication, operation status information of the object; determine an overlay image comprising a first visual effect, wherein an overlay position, an overlay orientation, or a combination thereof of the first visual effect within the overlay image is based on the position, the orientation, or the combination thereof of the object; and effectuate displaying of the overlay image including the first visual effect on the display, wherein the first visual effect as displayed includes at least some of the operation Appeal 2021-003600 Application 15/429,953 3 status information obtained from the object via the wireless communication established after detecting the object, and wherein the at least some of the operation status information displayed includes one or more of a power state of the object, one or more values of one or more changeable operating parameters of the object, or one or more values of one or more fixed operating parameters of the object. Appeal Br. 32-33 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nehmadi US 2014/0160117 A1 June 12, 2014 Mullins US 2016/0247324 A1 Aug. 25, 2016 Fujita US 2016/0352930 A1 Dec. 1, 2016 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1-23 112(a) Written Description 1-23 Nonstatutory Double Patenting US 10,587,834 B2 1-23 103(a) Mullins, Fujita, Nehmadi OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). Appeal 2021-003600 Application 15/429,953 4 After considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections, except for the rejection under § 112. With respect to the other rejections, we adopt as our own (1) the pertinent findings and reasons set forth by the Examiner in the Action from which this appeal is taken (Final Act. 5-27) and (2) the corresponding reasons set forth by the Examiner in the Examiner’s Answer (Ans. 13-18) in response to Appellant’s Appeal Brief. We concur with the applicable conclusions reached by the Examiner and emphasize the following. ANALYSIS SECTION 112 REJECTION Appeal 2021-003600 Application 15/429,953 5 The Examiner rejected claims 1-23 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement because “Applicant doesn’t have support establishing wireless communication after detecting the object.” Final Act. 3. According to the Examiner, Appellant’s disclosure, and more specifically Paragraph 33 of the Specification, “indicates operation status may be found using wireless communication but doesn’t indicate when or how or based on what the wireless communication is established.” Id. The Examiner also asserted that the second visual effect of “determine a second visual effect based on the information, wherein the second visual effect is different from the first visual effect” feature in claim 21 does not have written support in Appellant’s disclosure. Id. at 4. The Examiner identified Paragraph 43 of the Specification as the closest description for this limitation and asserts “[t]he above paragraph indicates that there are two visual effects but these two visual effects are caused by two different operating statuses,” or that “these two visual effects are caused by two different operating statuses.” Id. Appellant argues that the Specification supports the recited limitations including “after detecting the object, establish wireless communication with the object” and “at least some of the operation status information obtained from the object via the wireless communication established after detecting the object” recited in claims 1, 10, and 19, as well as “wherein the second visual effect is different from the first visual effect,” recited in claim 21. because, contrary to the apparent position of the Examiner, different possible timelines to establish wireless communication do not need to have explicit support and instead “may be supported by implicit or inherent disclosure (along with explicit disclosure). [MPEP 2163(1)(B)].” Appeal Br. 9. Appeal 2021-003600 Application 15/429,953 6 According to Appellant, Figure 7 of the Specification illustrates the recited method steps including “an operation ‘702’ of detecting an object occurring prior to an operation ‘704’ of obtaining operation status information of an object.” Id. at 10. Additionally, Appellant asserts that Paragraph 33 of the Specification describes using “different wireless communication methods to obtain operation status information of an object,” which “implicitly and/or inherently describes that the particular wireless communication method is first ‘established,’ as a person of ordinary skill in the art would recognize that ‘establishing’ the communication must occur prior to using such wireless communication methods.” Id. at 11-12. Appellant further argues that “[a] person of ordinary skill in the art would recognize from at least FIG. 7 possession of the feature of detecting the object prior to obtaining operation status information.” Id. at 12. With respect to claim 21, Appellant provides similar reasoning and asserts Paragraph 43 of the Specification provides sufficient written support for “wherein the second visual effect is different from the first visual effect” limitation. Id. at 13-17. Based on our review of the relevant parts of the Specification, we disagree with the Examiner that Appellant’s original disclosure fails to convey with reasonable clarity to ordinarily skilled artisans that Appellant possessed the claimed invention, including the limitations related to establishing wireless communication and obtaining object information via the wireless communication “[T]he description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (internal citations omitted). Rather, “the test for sufficiency is whether the disclosure of the application Appeal 2021-003600 Application 15/429,953 7 relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad, 598 F.3d at 1351. Paragraph 33 of the Specification describes obtaining the operation status of the object based on a variety of wireless communication methods, which is understood by one of ordinary skill in the art to encompass an appropriate sequence/timing of establishing the communication to obtain the status recited in claim 1. Similarly, Paragraph 43 of the Specification describes how the visual effects component determines the first and second visual effects based on the change in the operation status information of the object. Thus, we are persuaded by Appellant’s argument that the Specification provides written description support for the above-identified disputed limitation and that the Examiner erred by rejecting the claims for lack of written description support. Accordingly, we do not sustain the rejection of claims 1-23 under 35 U.S.C. § 112(a). SECTION 103 REJECTION Claim 1 Appellant contends the Examiner erred in rejecting claim 1 because Mullins fails to disclose “effectuate displaying of the overlay image including the first visual effect on the display, wherein the first visual effect as displayed includes at least some of the operation status information obtained from the object via the wireless communication established after detecting the object.” Appeal Br. 21-22. Appellant argues that “Mullins does not describe presenting anything that was obtained directly from the machine” and instead “presents a video of the machine that was previously Appeal 2021-003600 Application 15/429,953 8 recorded and stored, which acts as a proxy to convey current information about a particular condition of the machine.” Id. at 23. According to Appellant, “[c]laim 1 is different from the [sic] Mullins because the claim does not require a proxy to present operation status information - instead, the claim recites obtaining operation status information from an object and presenting that information.” Id. Appellant then argues that in Mullins, “even if the video of the machine in the past portrays the machine as it currently operates following a current detection in the exact same way, the video is not actually displaying the machine as it currently operates - instead, it is displaying a match that was previously recorded.” Id. Regarding the other applied references, Appellant argues that Fujita and Nehmadi fail to cure the above-discussed deficiencies of Mullins. Id. at 24. Appellant additionally argues that the Examiner’s proposed rejection is in error because claim 21 (dependent from claim 1) is also rejected on the same basis and rationale, whereas the two claims differentiate in the ways the operation status information is determined, such as “(1) including the operation status information in the visual effect itself (as in claim 1), and (2) matching the operation status information to a visual effect (as was introduced in claim 21).” Id. at 25. In response, the Examiner explains that the visual effect in Mullins includes the operation status retrieved from the object because “Mullins detects operation status from the object and matches the operation object in a server to find the fix for the operation status and displays virtual information (how to solve for issues with the operation status obtained from the object) in the display.” Ans. 15. According to the Examiner, Mullins provides a video footage or animation of virtual objects that “includes operation status Appeal 2021-003600 Application 15/429,953 9 information and how to fix the current operating condition which is malfunction X.” Id. Referring to Paragraphs 102 and 103 of Mullins, the Examiner further explains that “current operating condition is retrieved from the object and matched with a database’s condition to retrieve a corresponding virtual information to fix current operating status.” Id. Additionally, the Examiner finds that certain citations in Mullins could reasonably teach or suggest the recited features of claim 21, as well as claim 1. Id. at 17 (citing Mullins ¶ 66). Appellant’s arguments are not persuasive of error. We observe that Appellant does not dispute the Examiner’s finding that Mullins teaches capturing a video or image from the machine and obtaining a condition of the machine from the video/image. See Appeal Br. 22. However, we disagree with Appellant’s assertion that “Mullins presents a video of the machine that was previously recorded and stored.” Appeal Br. 23. In that regard, Mullins discloses a user of a viewing device captures an image of a physical object, i.e., a factory machine, including data points related to the object and its environment. Mullins ¶ 41. Contrary to Appellant’s argument that the information is not directly obtained from the machine, Appeal Br. 23, Reply Br. 9, Mullins discloses that the additional data collected by the user includes “GPS location of the factory machine 114, unique wireless identifier, operating status, and distance from the user viewing device 101 to the factory machine 114.” Mullins ¶ 41 (emphasis added). Mullins also discloses that a local library may be used to retrieve models of virtual objects with feature points of real-world physical objects or references. See id. That is, although the stored information in Mullins does not take the place of the information obtained from the physical machine, Mullins’ stored Appeal 2021-003600 Application 15/429,953 10 information complements the obtained information by providing a template for the visual display of the machine. Mullins also discloses that the current condition of the factory machine is detected by the user viewing device, such as an augmented reality viewing device, or by using sensors that determine the operating status of the machine including “normal operation, defective, overheated, specific error code,” which may also be “a combination of information based on the identification of the factory machine 114, the present state of the viewing device 101, and the current operating status of the factory machine 114.” Mullins ¶ 65. Based on the obtained information, including the operating status of the machine, we agree with the Examiner’s finding that showing how to repair certain malfunctions is associated with the determined condition of the machine, and not any pre-stored status information. See Ans. 15. Therefore, contrary to Appellant’s assertion with respect to disclosure in Mullins of storing virtual contents to a server, Reply Br. 6-9, the operation status information is obtained directly from the factory machine. Additionally, we are not persuaded by Appellant’s reliance on the alleged deficiencies of Mullins to support the assertion that the proposed modification would not be consistent with the flow described in Mullins. See Appeal Br. 24; Reply Br. 9. As discussed above, Mullins teaches obtaining operation status information directly from the object (factory machine) in the form of position and operating data. In sum, we are not persuaded that a person having ordinary skill in the art would understand the teachings of Mullins to be limited to determining the operation status of the object from a stored file, whereas the references teaches that the operation status is obtained directly from the machine by capturing a visual image and Appeal 2021-003600 Application 15/429,953 11 obtaining sensor data relevant to different operational information of the machine. The preponderance of the evidence in this appeal record therefore supports the Examiner’s conclusion that the claimed subject matter would have been obvious over Mullins in view of Fujita and Nehmadi. Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for the above reasons and those provided by the Examiner. Because we find Appellant’s arguments unpersuasive of error in the Examiner’s rejection of claim 1 for the reasons discussed above, we likewise sustain the Examiner’s rejection of claims 2-20 not argued separately. Claim 21 Appellant contends that the Examiner erred in rejection claim 21 by relying on the same combination used in rejecting claim 1. Appeal Br. 27- 28. Similar to claim 1 arguments, Appellant argues that the Examiner’s stated rejection lacks specific findings in Mullins to meet the recited “determine a second visual effect based on the information [that matches the operation status information to individual visual effects and was retrieved from a storage device], wherein the second visual effect is different from the first visual effect.” Id. at 25. We are unpersuaded of Examiner error. As explained by the Examiner, “Mullins [0066] teaches both the limitation of determining visual effect based on operating status (claim 1) and limitation of determining visual effect from database based on the operating status.” Ans. 17. In addition to determining the operation status information from the visual image of the object, Mullins discloses in Paragraph 66 that predefined conditions and corresponding virtual content may be retrieved and compared Appeal 2021-003600 Application 15/429,953 12 to the current conditions associated with the viewing device. See Mullins ¶¶ 65-66. The virtual content showing how to repair the factory machine in Mullins meets the second visual effect which is different from the first visual effect and corresponds to the current status of the machine. Mullins ¶ 66. Based on our analysis above we agree with the Examiner’s conclusion that the subject matter of claim 21 would have been obvious in view of Mullins, Fujita, and Nehmadi. Accordingly, we sustain the Examiner’s rejection of claim 21, as well as claims 22 and 23 not argued separately, under 35 U.S.C. § 103 for the above reasons and those provided by the Examiner. NON-STATUTORY DOUBLE PATENTING REJECTION Appellant does not present any arguments to challenge the double patenting rejection beyond referring to those made for the § 103 rejection and states: The Office Action then relies on the teaching of Mullins and Fujita in the same way as applied to the rejection of the independent claims in under 103 as remarked above. [Office Action, pp. 10-12]. Accordingly, the arguments presented above in connection to the independent claims are applied, mutatis mutandis, to the nonstatutory double patenting rejection. Accordingly, the nonstatutory double patenting rejection constitutes legal error and must be reversed. See Appeal Br. 30. As a result, we summarily sustain the Examiner’s non- statutory double patenting rejection of claims 1-23. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an appellant fails to present arguments on a particular issue -- or, more broadly, on a particular rejection -- the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection.”). Appeal 2021-003600 Application 15/429,953 13 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-23 112(a) Written Description 1-23 1-23 Nonstatutory Double Patenting US 10,587,834 B2 1-23 1-23 103(a) Mullins, Fujita, Nehmadi 1-23 Overall Outcome 1-23 TIME PERIOD FOR RESPONSE 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). AFFIRMED