Dropbox, Inc.

Patent Trials and Appeals Board

Sep 1, 2020

14628113 - (D) (P.T.A.B. Sep. 1, 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.
14/628,113 02/20/2015 Benjamin Zeis Newhouse 20033.41.1_P473US1 5512
122246 7590 09/01/2020
Keller Jolley Preece / Dropbox
1010 North 500 East, Suite 210
North Salt Lake, UT 84054
EXAMINER
LIU, GORDON G
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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@kjpip.com
gjolley@kjpip.com
ljohnson@kjpip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN ZEIS NEWHOUSE and
TERRENCE EDWARD MCARDLE
_____________

Appeal 2019-002878
Application 14/628,113
Technology Center 2600
____________

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1–20. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We reverse and additionally exercise our discretion under 37 C.F.R.
§ 41.50(b), and enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 103, for claims 1–20, which we conclude are obvious over the cited
references.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). According to Appellant, the real party in interest is
Dropbox, Inc. See Appeal Br. 1.
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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to “virtual and
augmented reality, and more specifically to techniques for capturing and
displaying video content that changes temporally and potentially spatially in
a highlighted portion of a virtual or augmented reality (VAR) scene.” Spec.
¶ 2.
Independent Method Claim 1
1. A method comprising:
generating a virtual or augmented reality (VAR) scene
based on a first plurality of images captured by a camera of a
device;
[L1] generating dynamic content for a portion of the VAR
scene, the dynamic content comprising a second plurality of
images captured by the camera of the device;
detecting location and orientation data of the device;
based on the location and orientation data of the device,
presenting a view of the VAR scene on the device; and
presenting, within the view of the VAR scene, the dynamic
content overlaid over the portion of the VAR scene by overlaying
at least one image from the second plurality of images on at least
one image from the first plurality of images and varying over
time the at least one image from the second plurality of images.

Appeal Br. 11, “CLAIMS APPENDIX” (Bracketed lettering added, emphasis
added).

2 We herein refer to the Non-Final Office Action, mailed May 31, 2018
(“Non-Final Act.”); Appeal Brief, filed Nov. 8, 2018 (“Appeal Br.”); the
Examiner’s Answer, mailed Jan. 11, 2019 (“Ans.”), and the Reply Brief,
filed Feb. 27, 2019 (“Reply Br.”).
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References
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Edge et al. (“Edge”)
McArdle et al. (“McArdle”)
US 2010/0208033 A1
US 9,271,025 B2
Aug. 19, 2010
Feb. 23, 2016
Rejection
Claims 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable
over McArdle in view of Edge. See Non-Final Act. 3.

ISSUES AND ANALYSIS
Rejection of Independent Claim 1 under § 103
Issue
Under 35 U.S.C. § 103, we focus our analysis on the following argued
limitation that we find is dispositive regarding the rejection of independent
method claim 1:
Did the Examiner err by finding McArdle and Edge collectively teach
or suggest disputed limitation L1:
A method comprising . . .

[L1] generating dynamic content for a portion of the
VAR scene, the dynamic content comprising a second plurality
of images captured by the camera of the device,

within the meaning of representative independent claim 1?3 (emphasis

3 We give the contested claim limitations the broadest reasonable
interpretation consistent with the Specification. See In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
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added). See Non-Final Act. 3–7.
Analysis
The Examiner finds Edge’s aging block 732 that “ages” the items, for
example, by altering geometric location data or rendering date (e.g., color,
size, transparency, etc.) teaches or suggests “the dynamic content.” Non-
Final Act. 5, citing Edge, Fig. 7, ¶ 86. The Examiner further finds Edge’s
video camera that continuously captures the scene teaches or at least
suggests “a second plurality of images captured by the camera of the
device.” Id.
Appellant disputes the Examiner’s findings regarding limitation “L1”
of claim 1, by contending:
But Edge's “new item”—like all of Edge's “aging
items”—constitutes but one item from a “stack of items [that] is
virtual” and not captured by a camera. Edge ¶ [0085]. Edge
emphasizes that its “aging items” differ from the “real camera
images” that represent Edge's physical environment within
which the “virtual items” are rendered. Id ¶¶ [0017], [0083].
Indeed, the Office Action cannot cite evidence from Edge
explaining that the “new item” (or any item in the stack of items)
is captured by a camera. Because Edge's “aging items” are
virtual, they cannot constitute “dynamic content comprising a
second plurality of images captured by the camera of the
device”—when the pending independent claims recite
“overlaying at least one image from the second plurality of
images on at least one image from the first plurality of images.”
To be sure, the Office Action cryptically explains (at 5) that
Edge's “video camera continuously captures the scene, which is
corresponding to the second plurality of images, such as the
previous captured images are used to generate the current time
aging items.” But the Office Action has not (and cannot) cite
evidence that (i) the “aging items” are captured by a camera or
(ii) the scene itself is captured by a camera or overlaid on
anything. Indeed, by referring to the “scene,” the Office Action
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presumably points to Edge's “mixed reality scene,” Edge
¶¶ [0084]-[0085]. But rather than overlay a camera-captured
image on another camera-captured image, as the independent
claims recite, Edge “render[s]” the “[v]irtual items . . . as
graphics in conjunction with” and over “real camera images” to
create the “mixed reality scene” in Figure 7. Edge ¶ [0084].
Simply put, virtual items mixed in (and over) real camera images
does not constitute overlaying at least one image captured by the
camera on at least one other image captured by a camera and
varying the overlaid image over time, as the current claims recite.
The Office Action cites nothing from McCardle to the contrary.
Appeal. Br. 7 (emphasis added).
Appellant further argues:
The Office Action (at 2) suggests that overlaying one
virtual item (not captured by a camera) on another virtual item
(also not captured by a camera) constitutes overlaying a camera-
captured image on another camera-captured image, as the
independent claims currently recite. In particular, the Office
Action (at 2) explains that “dynamic items are overlaid on the
background images, such as T-4 work news is overlaid on the
older work news; and T-2 personal news is overlaid on older, i.e.,
> T-2 personal news” in Edge's Figure 7. As repeatedly
emphasized by Edge, however, the “items” labeled as T-2, T-1,
and T-4 (and shown near reference number 704 in Figure 7) are
not captured by a camera but are part of Edge's stack of virtual
items. Edge ¶ [0085]. The pending claims simply do not recite
overlaying one virtual item (not captured by a camera) on another
virtual item (also not captured by a camera) as taught by Edge.
Appeal Br. 8.
The Examiner disagrees with Appellant, and notes that Edge’s device
112, having a webcam, as shown in Fig. 1, teaches a (video) camera. Ans. 4.
Appellant responds by contending: “The Answer further demonstrates
that the Examiner misunderstands the scope of Edge's teachings—by
conflating Edge's video-camera capture of a real environment with Edge's
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rendering of virtual items as graphics over such a real environment.” Reply
Br. 1. Appellant specifically points out:
[B]y relying on Edge's overlay of virtual news items (not
captured by a camera) on other virtual news items (also not
capture by the camera), the Answer points to prior art that
contradicts the claimed “dynamic content comprising a second
plurality of images captured by [a] camera of [a] device.” The
Answer does not (and cannot) refute that each of Edge's “stack
of [news] items is virtual,” Edge ¶ [0085], in contrast to the “real
camera images” that capture the physical environment with
which the “virtual items” are rendered, id ¶ [0083]. Neither does
the Answer assert (nor Edge disclose) a system overlaying such
“real camera images” on other camera images.
Reply Br. 2–3.
Edge's “‘work news’ stack” and “‘personal news’ stack”
(including items T-1 to T-4) are simply not captured by a camera.
To the contrary, Edge renders such “[v]irtual items” as graphics
“in conjunction with real camera images to provide a mixed
reality scene.” Edge ¶ [0083] (“Virtual items are typically treated
as graphics to be positioned with respect to the map and rendered
as graphics in conjunction with real camera images to provide a
mixed reality scene.”); see also id. ¶ [0017] (similar). In spite of
the Examiner’s assertions to the contrary, Edge's rendering of
virtual graphics does not an image “captured by a camera” make.
Reply Br. 3.

We are persuaded by Appellant’s arguments and, based on our review
of the record, agree with Appellant that the Examiner has not shown by a
preponderance of the evidence a teaching or suggestion of a camera
capturing dynamic content, within the meaning of Appellant’s claim 1.
Therefore, for essentially the same reasons argued by Appellant, we find the
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Examiner has not fully developed the record to show how the teachings of
McArdle and Edge individually or collectively teach or suggest the disputed
limitation, “the dynamic content comprising a second plurality of images
captured by the camera of the device,” as recited in claim 1. (emphasis
added).
Accordingly, for essentially the same reasons argued by Appellant in
the Briefs, we are constrained on this record to reverse the Examiner’s § 103
rejection of independent claim 1.
For the same reasons, we also reverse the obviousness rejection of
independent claims 8 and 15, which recite the disputed claim 1 limitation in
commensurate form using similar language. Because we have reversed the
rejection of each independent claim on appeal, we also reverse the
obviousness rejection of the associated dependent claims that depend
therefrom.
However, we set forth a new ground of rejection, infra.

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NEW GROUND OF REJECTION for Claims 1–20
under 35 U.S.C. § 103
Under our authority pursuant to 37 C.F.R. § 41.50(b), we set forth a
new ground of rejection of claims 1–20 under 35 U.S.C. § 103, as
unpatentable over McArdle and Edge.
We adopt the Examiner’s obviousness rejection, modified as follows
for each independent claim 1, 8, and 15:
Based upon our review of the evidence of record, we find Edge’s
remote site (“that provides a news banner or advertisements such that the
method 600 readily presents such content upon merely activating the
camera”) teaches or suggests the disputed limitation, “a second plurality of
images captured by the camera of the device,” as identically recited in
independent claims 1, 8, and 15 (emphasis added). Edge ¶ 69.
We note Appellant’s Specification describes dynamic content as
“content that varies over time.” Spec. ¶¶ 4, 19. The Specification further
describes dynamic content as “[a]ny suitable content that varies over time
and/or spatial domains.” Spec. ¶ 41.
Given this context (id.), we find Edge’s “virtual items” that are
rendered with time as a parameter are dynamic, i.e., they may fade or
become smaller over time. Edge ¶ 69. Therefore, we find Edge’s
description (¶ 69) teaches or suggests “dynamic content comprising a second
plurality of images” (claims 1, 8, 15), that is captured by Edge’s camera.
We additionally conclude that it would have been obvious to one of
ordinary skill in the art to have modified McArdle’s VAR scene (e.g., col. 3,
l. 16) to obtain the predictable results of adding Edge’s dynamic content
(e.g., ¶ 69) captured by a camera of the device. As found by the Examiner,
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this would “provide users with a consistent and convenient way of
interacting with information and media of special importance.” Non-Final
Act. 6 (citing Edge ¶ 18).
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
Further, in KSR, 550 U.S. at 418, the Court stated that when
considering obviousness that “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” “When there is a design need or
market pressure to solve a problem and there are a finite number of
identified, predictable solutions, a person of ordinary skill has good reason
to pursue the known options within his or her technical grasp.” KSR, 550
U.S. at 421.
This reasoning is applicable here because Appellant has not identified
knowledge gleaned only from the present application that was not within the
level of ordinary skill at the time the claimed invention was made. See In re
McLaughlin, 443 F.2d 1392 (CCPA 1971). Moreover, Appellant has not
provided any objective evidence of secondary considerations (e.g.,
unexpected results), which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese &
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
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Given the evidence of record, we find one of ordinary skill in the art
would have understood that capturing dynamic content by a camera of the
device would have merely realized a predictable result. See KSR, 550 U.S.
at 417.
Accordingly, we set forth a new ground of rejection under 35 U.S.C.
§ 103, for claims 1–20, based upon our aforementioned modification of the
Examiner’s rejection of independent claims 1, 8, and 15.

Conclusion
The Examiner erred with respect to the rejection of claims 1–20,
under 35 U.S.C. § 103.

We enter a new ground of rejection for claims 1–20 under 35 U.S.C.
§ 103, as being obvious over McArdle and Edge.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C § Reference(s)/
Basis
Affirmed Reversed New
Ground
1–20 103 McArdle,
Edge
1–20 1–20

This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for
judicial review” (emphasis added).
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Section 41.50(b) also provides:
When the Board enters such a non-final decision, the 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. The new ground of
rejection is binding upon the examiner unless an amendment
or new Evidence not previously of Record is made which, in
the opinion of the examiner, overcomes the new ground of
rejection designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the Board
pursuant to this subpart.4
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the same
Record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

4 Regarding option (1), “Reopen prosecution,” and particularly regarding the
requirement to submit an amendment and/or new evidence, please note
MPEP § 1214.01(I): “If the appellant submits an argument without either an
appropriate amendment or new evidence as to any of the claims rejected by
the Board, it will be treated as a request for rehearing under 37 C.F.R.
41.50(b)(2)” (emphasis added). If for any reason Appellant desires to
reopen prosecution before the Examiner without submitting an amendment
and/or new evidence, a Request for Continued Examination (RCE) that
complies with 37 C.F.R. § 114 will remove the application from the
jurisdiction of the Board under 37 C.F.R. § 41.35, and will reopen
prosecution before the Examiner.
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(emphasis added).

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). See
37 C.F.R. § 41.50(f).
REVERSED; 37 C.F.R. § 41.50(b)