DISNEY ENTERPRISES, INC.

Patent Trials and Appeals Board

Sep 23, 2020

15291235 - (D) (P.T.A.B. Sep. 23, 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.
15/291,235 10/12/2016 MARK A. REICHOW 16-DIS-267-PR-US-UTL 2882
63652 7590 09/23/2020
DISNEY ENTERPRISES, INC.
c/o Snell & Wilmer L.L.P.; Attn IP DOCKET
400 East Van Buren Street
Suite 1900
Phoenix, AZ 85004-2202
EXAMINER
ALATA, YASSIN
ART UNIT PAPER NUMBER
2426
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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):
IPDOCKET@swlaw.com
klembke@swlaw.com
ksandoval@swlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK A. REICHOW, JEFFREY L. VORIS,
JOHN DAVID SMITH, ZACHERY W. KENNEDY, and
PRESTON TIMOTHY LANDRY
Appeal 2019-003963
Application 15/291,235
Technology Center 2400
Before BRADLEY W. BAUMEISTER, GREGG I. ANDERSON, and
SCOTT RAEVSKY, Administrative Patent Judges.
RAEVSKY, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 4–12, 14–17, 19, 20, and 22–24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 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. (a wholly owned subsidiary of The Walt Disney Company).
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to a multimedia system for transforming any
room into a show environment. Spec., Title. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A system for providing entertainment with multimedia
content matched to a particular space or room, comprising:
a display device positioned in a room;
a projector positioned in the room for projecting on one
or more surfaces in the room;
an audio system for providing audio output into the
room; and
a show controller operating, based on a show file
defining display content, projector content, and audio content
for a show, the display device to display the display content, the
projector to project the projector content onto the one or more
surfaces in the room, and the audio system to output the audio
content for the show into the room,
wherein the projector content is mapped, prior to the
show controller operating, to the one or more surfaces in the
room using projection mapping,
wherein the projection mapping includes determining
size, shape, and location of the one or more surfaces in the
room and at least one of fitting and aligning the projector
content to the size, shape, and location of the one or more
surfaces in the room,
wherein during a first time period the display content
includes an object, and
wherein during a second time period the projector
content includes the object and the display content is free of the
object, whereby the object moves from the display device onto
the one or more surfaces between the first and second time
periods.
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REFERENCES
The prior art relied upon by the Examiner is:
Bhat
Benko
US 2007/0126864 A1
US 2014/0051510 A1
June 7, 2007
Feb. 20, 2014

REJECTION
Claims 1, 2, 4–12, 14–17, 19, 20, and 22–24 stand rejected under
35 U.S.C. § 103 as being unpatentable over Bhat and Benko. Final Act. 2.

ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See id.; 37 C.F.R. § 41.37(c)(1)(iv)
(2019).

Independent Claims 1 and 7
Appellant contends that the combination of Bhat and Benko fails to
teach or suggest “a show controller operating, based on a show file,” recited
in claim 1. Appeal Br. 12–13. Appellant asserts that Bhat contains “no
teaching or suggestion of use of a show controller or that it should be
operated based on ‘a show file’ to operate the system components.” Id. at
12 (emphasis added).
The Examiner initially finds that Bhat discloses the disputed
limitation at paragraphs 51–53. Final Act. 3. In the Answer, the Examiner
specifies that paragraph 52’s disclosure of a “projector is integrated with or
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connected to a device that controls the projected surround visual field” is the
recited “show controller.” Ans. 8. The Examiner does not address
Appellant’s argument that Bhat does not disclose a show controller
operating based on a show file. See Id.2
We agree with Appellant that Bhat does not disclose this limitation.
Although Bhat discloses “a device (not shown) that controls the projected
surround visual field,” the Examiner has not established any description of a
“show file” in Bhat, let alone that a show controller is operated based on the
“show file.” See Bhat ¶ 52. We, therefore, do not sustain the Examiner’s
rejection of claim 1. As independent claim 7 recites identical claim
language, we, likewise, do not sustain the Examiner’s rejection of claim 7,
or of claims 2, 4–6, 8, and 22–24, which depend from claims 1 and 7.
In so doing, we note that in an ex parte appeal, the Board “is basically
a board of review—we review . . . rejections made by patent examiners.” Ex
parte Gambogi, 62 USPQ2d 1209, 1211 (BPAI 2001). “The review
authorized by 35 U.S.C. Section 134 is not a process whereby the
examiner . . . invite[s] the [B]oard to examine the application and resolve
patentability in the first instance.” Ex parte Braeken, 54 USPQ2d 1110,

2 The Examiner states, “[Bhat’s] device might also contain data that was
authored to project and synchronize the surround visual field to the content
being displayed on the TV.” Ans. 8. It is unclear whether the Examiner
intended this statement about “data” to refer to a show file. Regardless, the
Examiner’s statement that Bhat’s device “might” contain such data is
speculative and falls short of establishing a prima facie case of obviousness
that one of ordinary skill in the art would have found it obvious to modify
Bhat to include a show file. Cf. Personal Web Techs. LLC v. Apple, Inc.,
848 F.3d 987, 993 (Fed. Cir. 2017) (it is not enough to state that “a skilled
artisan, once presented with the two references, would have understood that
they could be combined”) (emphasis added).
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1112 (BPAI 1999). Because we are a board of review, and not a place of
initial examination, we will not engage in the de novo examination required
to supplement the Examiner’s findings in connection with the requirement
that the show controller operate based on a show file. We express no
opinion as to whether independent claims 1 and 7 would be obvious over
Bhat and Benko if supported by additional explanation and/or
references. We leave any such further consideration to the
Examiner. Although the Board is authorized to reject claims under
37 C.F.R. § 41.50(b) (2019), no inference should be drawn when the Board
elects not to do so. See MPEP § 1213.02 (9th ed. rev. 10.2019 June 2020).
Furthermore, our decision is limited to the findings before us for
review. The Board does not allow claims of an application and cannot direct
an Examiner to pass an application to issuance. Rather, the Board’s primary
role is to review adverse decisions of examiners including the findings and
conclusions made by the Examiner. See 37 C.F.R. § 41.50(a)(1) (2019)
(“The Board, in its decision, may affirm or reverse the decision of the
examiner in whole or in part on the grounds and on the claims specified by
the examiner.”).
Independent Claim 9
Appellant contends,
claim 9 includes limitations similar to claim 1 (e.g., “to
project video mapped to a surface of at least one of the walls by
projection mapping that includes spatially mapping the surface
and fitting or aligning the video, prior to projecting by the
projector, to the spatially mapped surface” and inclusion of “a
show controller”) such that the reasons for allowing claim 1
over Bhat and Benko are applicable to claim 9.
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Appeal Br. 17 (emphasis added). We did not address this particular claim 1
argument above because we reverse the rejection of claim 1 on other
grounds. We now address this argument.
With respect to claim 1, Appellant begins by construing “projecting
mapping”—a term that also appears in claim 9. Appeal Br. 8–9. Appellant
contends this term is a “term of art” and directs the Board to a definition of
the term provided by Wikipedia (https://en.wikipedia.org/wiki/
Projection_mapping). Id. at 8. Appellant does not state what this definition
is but asserts,
[b]ased on this definition, “projection mapping” is not shown
by merely “extending or supplementing the content that [is]
displayed on the TV” . . . and is not shown by the masking of
Benko or its mere projection of light on unmasked portions of a
room. Instead, in projection mapping, content has to be
mapped carefully onto surfaces (which may be irregular and/or
3D as shown in the images in Wikipedia with Appellant’s claim
23 that specifically calls out a 3D object to be in surfaces
mapped in the projection mapping).
Id. Appellant then points to several paragraphs of the Specification that
purportedly are “wholly consistent with the definition known to those skilled
in the art (such as provided in Wikipedia).” Id. at 9 (citing Spec. ¶¶ 21, 25,
26, 36, 42, 50, 53, 62).
Appellant’s arguments construing “projection mapping” are
unpersuasive for at least the following reasons. First, Appellant cites
Wikipedia but does not say what definition from Wikipedia it is relying on.
Id. at 8. Second, Wikipedia is generally not a reliable source. See, e.g., Ex
parte Three-Dimensional Media Group, Ltd., 2010 WL 3017280, at *17
(BPAI 2010) (“Wikipedia is generally not considered to be as trustworthy as
traditional sources for several reasons, for example, because (1) it is not peer
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reviewed; (2) the authors are unknown; and (3) apparently anyone can
contribute to the source definition”); see also Bing Shun Li v. Holder, 400
Fed. Appx. 854, 857 (5th Cir. 2010) (noting Wikipedia’s unreliability).
Third, Appellant cites eight paragraphs of the Specification without any
analysis. Appeal Br. 9. “A skeletal ‘argument’, really nothing more than an
assertion, does not preserve a claim.” SmithKline Beecham Corp. v. Apotex
Corp., 439 F.3d 1312, 1320 (Fed. Cir. 2006) (quoting United States v.
Dunkel, 927 F.2d 955, 956 (7th Cir. 1991)). Finally, as we will explain
below, the Specification contradicts Appellant’s argument that the broadest
reasonable interpretation of “projection mapping” does not encompass
“masking.”
The Specification affirmatively includes the concept of masking in
projection mapping. The Specification describes “map[ping] where
projected content should be provided to achieve a desired visual effect/show
and where content should not be projected or be blocked . . . (e.g., to avoid
projecting light onto the display device[)].” Spec. ¶ 21 (emphasis added);
see also id. ¶ 26 (“projection mapping . . . typically includes a mapping of
the various content/images . . . . To avoid interference with the display
image . . ., the area 118 on the wall 112 associated with the display device
150 may be blocked out or blacked out”). Thus, under the broadest
reasonable interpretation in light of the Specification, projection mapping
includes both projecting content and not projecting or blocking out content
in specific areas, including the display device. We find the Specification’s
description of not projecting or blocking out content encompasses masking.
The Examiner finds Benko discloses projection mapping in both
claims 1 and 9. Final Act. 3 (citing Benko ¶¶ 17, 20, 22, 27, 40); Ans. 7.
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For instance, Benko discloses a “fitting procedure,” where “light is not
projected onto the plants, bookshelf, decorations, or floor[, and] the primary
display may be masked from projection in all illusions.” Benko ¶ 27.
We agree with the Examiner that Benko’s fitting procedure and
masking, as described in the cited paragraphs of Benko, teaches or suggests
the projection mapping limitations of claim 9, including “operating the video
projector to project video mapped to a surface of at least one of the walls by
projection mapping that includes spatially mapping the surfaces and fitting
or aligning the video, prior to projecting by the projector, to the spatially
mapped surface.”
Appellant also contends that the combination of Bhat and Benko fails
to teach or suggest the following additional limitations of claim 9:
a remote control device transmitting a show signal to the
controller,
wherein the show controller responds to the show signal
to determine an identifier for the remote control device and to
initiate or modify operations of the show components in the
room based on the identifier.
Appeal Br. 17.
Specifically, Appellant contends, “Bhat fails to show a controller
determining a remote control device’s identifier and, in response, selecting a
show file from a plurality of such files for use in operating show components
in a room.” Id. Appellant asserts that although the Examiner cites
paragraphs 61, 118, and 123 of Bhat, “none of these paragraphs discuss
determining an identifier for a control device and then using this identifier to
select a show file.” Id.
The Examiner initially finds, “[p]aragraphs 0061, 0118 and 0123 [of
Bhat] disclose the user of a remote controller and that [t]he video is
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animated based on control signals from the remote control.” Ans. 10. The
Examiner further reasons in the Answer, “[i]t [was] well known in the art
that the identifier for such remote controls has to be determined in order for
the remote controller to communicate with the system and to control the
show.” Id. at 11–12.
Appellant does not address the Answer’s clarified finding in its Reply
Brief. See Reply Br., passim. Arguments not made are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Furthermore, Appellant’s argument is not commensurate
with the scope of claim 9 because claim 9 does not refer to “selecting a show
file.” See Appeal Br. 17. Accordingly, we sustain the Examiner’s rejection
of claim 9.
Dependent Claim 12
Appellant contends that claim 12, which depends from claim 9,
“includes limitations similar to those of claim 7 such that the additional and
separate reasons provided for allowing claim 7 over Bhat and Benko are
relevant to the allowance of claim 12.” Appeal Br. 18. We did not address
the similar limitation in claim 7 above because we reverse the rejection of
claim 7 on other grounds.
Claim 12 recites, “wherein the show components further includes a
plurality of lighting elements and wherein the controller operates the lighting
elements to provide lighting effects including varying brightness and color
based on content of the video projected by the video projector.” With
respect to claim 7, Appellant argues that the combination of Bhat and Benko
fails to teach or suggest “a lighting system—that is separate from the display
device and the projector—with independently operable light elements.” Id.
at 16. Appellant contends that Bhat paragraph 125 fails to teach this
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limitation because “[t]here is no discussion of operation of actual light
elements in the room containing the display device.” Id.
Although the Examiner initially cites Bhat paragraph 125, in the
Answer, the Examiner further finds that “Benko discloses in paragraph 0034
that the lighting in the room can be changed based upon the mood or theme
in the game. The room could be illuminated by point light sources.”
Ans. 10. Appellant does not address this finding in the Reply Brief and,
therefore, waives any argument against this finding. See 37 C.F.R.
§ 41.37(c)(1)(iv); Reply Br., passim. As Appellant’s argument for claim 12
rests on its argument for claim 7, we sustain the Examiner’s rejection of
claim 12. See Appeal Br. 18.
Independent Claim 15
Appellant contends that “independent claim 15 is directed to a method
with limitations similar to claim 1 as modified by claim 7 such that the
reasons for allowing claims 1 and 7 are applicable to claim 15.” Appeal
Br. 18. As claim 15 does not contain the “show file” limitation we used as a
basis to reverse the rejection of claims 1 and 7, we sustain the rejection of
claim 15 for reasons similar to those discussed above.
We also sustain the rejection of dependent claims 10, 11, 14, 16, 17,
19, and 20, which Appellant does not argue separately. See 37 C.F.R.
§ 41.37(c)(1)(iv).

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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 2, 4–12,
14–17, 19,
20, 22–24
103 Bhat, Benko 9–12, 14–
17, 19, 20
1, 2, 4–8,
22–24

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 IN PART