Electronic Scripting Products, Inc.

Patent Trials and Appeals Board

Aug 2, 2021

2020001560 (P.T.A.B. Aug. 2, 2021)

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.
14/965,544 12/10/2015 Hector H. Gonzalez-Banos PEN-126-US 2407
91514 7590 08/02/2021
Marek Alboszta
555 Bryant Street #142
Palo Alto, CA 94301
EXAMINER
MARINELLI, PATRICK
ART UNIT PAPER NUMBER
2699
MAIL DATE DELIVERY MODE
08/02/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HECTOR H. GONZALEZ-BANOS, MAREK ALBOSZTA,
and MICHAEL J. MANDELLA
_____________

Appeal 2020-001560
Application 14/965,544
Technology Center 2600
____________

Before ELENI MANTIS MERCADER, ADAM J. PYONIN, and
GARTH D. BAER, Administrative Patent Judges.

PYONIN, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Electronic Scripting Products, Inc. as
the real party in interest. Appeal Br. 3.
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Application 14/965,544

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STATEMENT OF THE CASE
Introduction
The claimed invention is directed to “interfaces and methods for
producing input for software applications based on the absolute pose of an
item manipulated or worn by a user in a three-dimensional environment.”
Abstract. Claims 1–3, 6, 8–15, and 19–24 are pending; claims 1, 19, and 24
are independent. Appeal Br. 64–68. Claim 1 is reproduced below for
reference:
1. An apparatus comprising an item associated with a user in
a three-dimensional environment that has at least one invariant
feature which is optically detectable by said apparatus, said
apparatus further comprising:
(a) a unit on-board said item configured to receive non-
collinear optical inputs presented by said at least one invariant
feature in said three-dimensional environment;
(b) processing elements for recovering an absolute pose of
said item based on a homography and for providing a subset of
pose data corresponding to said absolute pose to an application;
wherein said absolute pose comprises three translational
degrees of freedom and three rotational degrees of freedom in
said three-dimensional environment.

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The Examiner’s Rejections
The Examiner relies on the following references:
Name Reference Date
Mandella US 2010/0001998 A1 Jan. 7, 2010
Meier US 2010/0208057 A1 Aug. 19, 2010
Carl US 8,542,219 B2 Sept. 24, 2013
Huttenlocher, “Recognizing Solid Objects by Alignment with an Image,”
International Journal of Computer Vision, 5:2, pp. 195–212 (1990)
Lee, “A Fast Geometrical Approach to Camera Extrinsic Parameters,”
Computers Math. Applic., Vol. 32, No. 12, pp. 93–100 (1996)
Ansar, “Linear Pose Estimation from Points or Lines,” European
Conference on Computer Vision, pp. 282–296 (2002)

Claims 1–3, 6, 8, 9, 12, 13, 19–21, 23, and 24 stand rejected under 35
U.S.C. § 112(a) as failing to comply with the written description
requirement. Final Act. 9.2
Claims 1–3, 6, 8–15, and 19–24 stand rejected under 35 U.S.C.
§ 112(a) as failing to comply with the enablement requirement. Final Act.
15.
Claims 1–3, 6, 8–15, and 19–23 stand rejected under 35 U.S.C. § 103
as being unpatentable over Mandella and Meier. Final Act. 18.
Claims 1–3, 6, 8–15, and 19–23 stand rejected under 35 U.S.C. § 103
as being unpatentable over Carl, Huttenlocher, and Ansar. Final Act. 28.
Claim 24 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Carl, Huttenlocher, Ansar, and Lee. Final Act. 35–36.

2 The rejection of claims 10, 11, 14, 15, and 22 under 35 U.S.C. § 112(a)
was withdrawn in the Answer. Ans. 4.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018). Except
where noted, we disagree with Appellant that the Examiner erred and adopt
as our own the findings and reasons set forth by the Examiner, to the extent
consistent with our analysis below.

A. Benefit of Filing Dates of Prior Applications
Resolution of the outstanding rejections first requires consideration of
the Examiner’s denial of Appellant’s benefit claims to the following root
parent applications:
1. Serial No. 10/769,484, filed on Jan. 30, 2004, which issued as Carl (U.S.
Patent 8,542,219); and
2. Serial No. 11/591,403, filed on Oct. 31, 2006, now U.S. Patent
7,729,515, which claims the benefit of Provisional No. 60/780,937 filed
on Mar. 8, 2006.
See Bib Data Sheet, Spec. 1:15–32; Final Act. 2.
First, Appellant does not address the Examiner’s denial of a priority
claim to Application Serial No. 11/591,403. Thus, we find no error in this
determination. See In re Jung, 637 F.3d 1356, 1366 (Fed. Cir. 2011) (“it has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections”). Our analysis will only consider the
benefit claim made to the filing date of Serial No. 11/769,484.
Second, with respect to Application Serial No. 11/769,484, the
Examiner finds the following:
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[t]he disclosure[s] of the prior-filed applications, [including]
Application No. 10/769484, [] fail to provide adequate support
or enablement in the manner provided by 35 U.S.C. 112(a) or
pre-AIA 35 U.S.C. 112, first paragraph for one or more claims
of this application.

Final Act. 2–3. Independent claims 1 and 19 require “processing elements . .
. based on a homography” and independent claim 24 requires “processing
electronics for recovering said extrinsic parameters.” Regarding claim 1’s
limitation of “(b) processing elements for recovering an absolute pose of
said item based on a homography and for providing a subset of pose data
corresponding to said absolute pose to an application,” the Examiner finds
that
application [10/769,484] does not address that the limitation,
“recovering an absolute pose of said item” being “based on
[homography]”. Therefore, the citations of col. 11, ln. 33 and
col. 5, ln. 13–15 [appearing in Application 10/769,484] do not
provide support, as well as the “other text and drawing figures
of the patent”.

Final Act. 4. Regarding claim 1, the Examiner concludes that “the
application 10/769484 does not reasonably convey that the applicant had
possession of the currently claimed limitations at the time of application
10/769484.” Final Act. 6. The Examiner further finds that independent
claim 19 “recites similar limitations as [c]laim 1” and “is also denied the
benefit of the priority date of 10/769484 for the same reasons.” Final Act. 6.
Regarding independent claim 24, the Examiner finds “the fact that
application 10/769484 does not mention using any of these parameters, or
any parameter of a camera, in generating pose data fails to give the current
limitation the filing data of application 10/769484.” Final Act. 7.
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The Examiner concludes “for the reasons set forth above,” that “the
application 10/769484 does not reasonably convey that the applicant had
possession of the currently claimed limitations [of independent claims 1, 19,
and 24] at the time of application [of root parent] 10/769484.” Final Act. 7.

1. Benefit of Filing Date of Serial No. 10/769,484 (Carl) With Respect to
Independent Claims 1, 19, and 24
Regarding independent claim 1, Appellant argues that various terms
used in claim 1 have written description support in the “parent specification”
or “parent application” corresponding to text reproduced from Carl. Appeal
Br. 23; see Appeal Br. 23–48. With respect to the claim term
“homography,” Appellant argues that
because geometric invariance subsumes homography, that
homography is inherent in geometric invariance. As already
stated, homography is one of the many techniques subsumed in
the concept of geometric invariance of the parent application
and its prosecution record, and well-understood by a POSA
[person of ordinary skill in the art].
The implicit inherency of homography in geometric
invariance satisfies the requirement of antecedent basis.

Appeal Br. 37–38, citing MPEP §§ 2163.03, 2163 (particularly citing
Kennecott Corp. v. Kyocera Int’l, Inc., 835 F.2d 1419, 1423 (Fed. Cir.
1987)). Appellant contends that “[t]he term ‘homography’ as already argued
by the applicant is subsumed in the term ‘geometric invariance’ used by the
parent application” (Appeal Br. 39), which states that
[a] number of optical measurement methods using on-board
arrangement 22 to recover pose of object 14 can be employed.
In any of these methods arrangement 22 uses on-board elements
to obtain pose data 12 in accordance with any well-known pose
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recovery technique including geometric invariance,
triangulation, ranging, path integration and motion analysis.

Appeal Br. 40, citing Carl 5:12–19. According to Appellant, “[a] POSA at
the time of the filing of the parent application would have understood that
geometric invariance implies a class of transformation matrices expressed,
among other, by the well-known homography or collineation matrix.”
Appeal Br. 40; see Reply Br. 8 (citing In re Robertson, 169 F.3d 743 (Fed.
Cir. 1999).
We are not persuaded by Appellant’s arguments. We disagree with
Appellant that the broad, general disclosure in the parent application
provides sufficient support for the specific limitations of the independent
claims. See, e.g., Appeal Br. 39 (“The term ‘homography’ as already argued
by the applicant is subsumed in the term ‘geometric invariance’ used by the
parent application); see also Ans. 12, 13; MPEP § 2163 (“The introduction
of claim changes which involve narrowing the claims by introducing
elements or limitations which are not supported by the as-filed disclosure is
a violation of the written description requirement.”), § 211.05 (“Only the
claims of the continuation-in-part application that are disclosed in the
manner provided by 35 U.S.C. 112(a) in the prior-filed application are
entitled to the benefit of the filing date of the prior-filed application.”).
Appellant’s disclosure3 regarding “homography” and “extrinsic
parameters” expressly offers specific benefits of these recited techniques.
The disclosure indicates a homography is used “[f]or efficiency reasons.”
Spec. 68:26–27. Further, a “homography that maps environmental features

3 For clarity, “Appellant’s disclosure” refers to the pending application on
Appeal (Application No. 14/965,544).
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on a 3-D plane to the surface of the photo sensor (i.e. the image plane) of a
camera positioned and oriented with respect to the 3-D plane” is “an
important use case.” Spec. 171:14–17. Similarly, “a robust method finds
the collineation that minimizes the sum of algebraic errors between the set of
extracted features and the reference set.” Spec. 77:6–8. Further, the
disclosure states that “[t]he recovery of the homography/collineation yields
intrinsic and extrinsic parameters of the camera.” Spec. 171:21–22.
Discussion of these particular benefits appears to represent the kind of
improvements often found in continuation-in-part-applications. Cf., Rowe
Intern. Corp. v. Ecast, Inc., 500 F. Supp. 2d 885, 890–891 (Dist. Ct. N.D.
Illinois, Eastern Div. (2007)), stating that
An improvement is “an alteration or addition to an existing
subject of invention or discovery that does not destroy its
identity or essential character but accomplishes greater
efficiency or economy: a modification improving and making
more valuable an existing discovery or invention.”‘ Webster’s
Third New International Dictionary 1138 (1993). The
continuation-in-part applications that became the ′398 and ′834
patents are, by definition, improvements.”

Taken together, Appellant’s disclosure’s reference to particular benefits with
respect to homography and collineation, along with the admission that the
intrinsic parameters of a camera are a result of these techniques, strongly
suggests to a person of ordinary skill in the art that Appellant did not possess
“processing elements . . . based on a homography” and “processing
electronics for recovering said extrinsic parameters” at the time of the filing
of parent Serial No. 10/769, 484, which does not contain these disclosures.
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Accordingly, we sustain the Examiner’s decision to not award the
application the benefit of the Jan. 30, 2004 filing date of Serial No.
10/769,484.

B. Written Description and Enablement Rejections
The Examiner finds that each of the limitations of claim 1 “fails to
comply with the written description requirement” because “the specification
and the drawings of [the] instant application, fail to disclose or describe
these features being implemented in the claimed manner.” Final Act. 10.
The Examiner rejects independent claim 19 “for the same rationale” (Final
Act. 10), as well as claims 2, 3, 6, 8–15, and 20–23. Final Act. 10. The
Examiner further rejects independent claim 24, finding that regarding the
limitation “wherein said extrinsic parameters comprise three translation
degrees of freedman and three rotational degrees of freedom of said camera
in said three-dimensional environment” the “specification and the drawings
fail [t]o disclose or describe such features. Final Act. 11.
Additionally, the Examiner again rejects claims 1–3, 6, 8–15, and 19–
23 as failing to comply with the written description requirement, because
“that the specification and the drawings of application 10/769484 fail to
disclose or describe the features of Claims 1 and 19, for the same reasons set
forth above in the [section regarding priority].” Final Act. 10 (emphasis
added). Regarding independent claim 24, the Examiner finds that “the
specification and the drawings of application 10/769484 fail to disclose or
describe the features of Claim[] 24, for the same reasons set forth above in
the [priority analysis],” and “[t]herefore, Claim 24 is rejected for failing to
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comply with the written description requirement.” Final Act. 11 (emphasis
added).
We find the Examiner errs with respect to the written description
rejections of the independent claims. First, the written description analysis
of the instant claims with respect to the parent application is relevant for
determining the effective filing date of the instant claims. A failure of the
instant claims to have written description support in the parent application
does not, standing alone, properly lead to a written description rejection.
Instead,
if a claim in a continuation-in-part application recites a feature
which was not disclosed or adequately supported by a proper
disclosure under 35 U.S.C. 112 in the parent nonprovisional
application, but which was first introduced or adequately
supported in the continuation-in-part application, such a claim
is entitled only to the filing date of the continuation-in-part
application.

MPEP § 211.05 (8th Ed. revised 08/2017)(accompanying case citations
omitted).
Second, the written description rejection of the instant claims with
respect to the instant application is conclusory and lacks sufficient analysis
to support the rejection. See Final Act. 10–15; Appeal Br. 12 (“The
applicant submits that aside from conclusory statements, the Examiner has
not met [their] burden.”). The Examiner’s withdrawal of the written
description rejection of claims 10, 11, 14, 15, and 22 has no explanation that
might provide some insight into the original rejection. See Ans. 4.
Accordingly, we reverse the Examiner’s written description rejection.
We similarly reverse the Examiner’s enablement rejection, as the record
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indicates the Examiner made no analysis of the Wands factors. See Final
Act. 16–17; MPEP § 2164.01 et seq (8th Ed. revised 08/2012).

C. Obviousness Rejections
Appellant’s argument in support of reversal of all obviousness
rejections is the following:
[b]ased on the above-mentioned [asserted] effective priority
date of the instant application [corresponding to the Jan. 30,
2004 filing date of Application No. 10/769,484], none of the
above references are applicable to the instant application as
prior art. The Examiner’s rejections under 35 USC 103 are thus
moot and are requested to be overturned by the PTAB.

Appeal Br. 63.
We are not persuaded by Appellant’s argument. As indicated above,
none of the claims in the instant application are entitled to the Jan. 30, 2004
filing date of Application No. 10/769,484. Appellant has not persuaded us
of Examiner error in the obviousness rejections. Accordingly, we sustain the
Examiner’s rejections of independent claims 1, 19, and 24, and all dependent
claims thereon.

DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1–3, 6, 8, 9,
12, 13, 19–
21, 23, 24
112(a) Written
Description
1–3, 6, 8, 9,
12, 13, 19–
21, 23, 24
1–3, 6, 8–15,
19–24
112(a) Enablement 1–3, 6, 8–
15, 19–24
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The Examiner’s decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim on appeal. See 37
C.F.R. § 41.50(a)(1).

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)(1)(iv).

AFFIRMED

1–3, 6, 8–15,
19–23
103(a) Mandella,
Meier
1–3, 6, 8–
15, 19–23

1–3, 6, 8–15,
19–23
103(a) Carl,
Huttenlocher,
Ansar
1–3, 6, 8–
15, 19–23

24 103(a) Carl,
Huttenlocher,
Ansar, Lee
24
OVERALL
OUTCOME
1–3, 6, 8,
9–15, 19–
24