Ex Parte Boldyrev et al

Patent Trial and Appeal Board

May 31, 2016

13329723 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/329,723 12/19/2011
10949 7590 06/02/2016
Nokia Corporation and Alston & Bird LLP
c/o Alston & Bird LLP
Bank of America Plaza, 101 South Tryon Street
Suite 4000
Charlotte, NC 28280-4000
FIRST NAMED INVENTOR
Sergey Boldyrev
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
042933/454428 9532
EXAMINER
GUO,XILIN
ART UNIT PAPER NUMBER
2616
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SERGEY BOLDYREV, JARI-WKKA HARALD
KAAJA, IAN JUSTIN OLIVER, and MIKKO ALEKSI
UUSITALO
Appeal2014-009657
Application 13/329,723
Technology Center 2600
Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20. Claims 21--48 are cancelled. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm-in-part.
Invention
The disclosed and claimed invention relates to "providing seamless
interaction in mixed reality." Spec. i-f 3.
Appeal2014-009657
Application 13/329,723
Representative Claim
1. A method comprising facilitating a processing of and/or
processing (1) data and/or (2) information and/or (3) at least one
signal, the (1) data and/or (2) information and/or (3) at least one
signal based, at least in part, on the following:
a processing of media information associated with at least one
augmented reality application to determine one or more digital
objects, wherein the one or more digital objects aggregate, at
least in part, data for defining the one or more digital objects, one
or more computation closures acting on the data, one or more
results of the one or more computation closures, or a
combination thereof; and
a composition, a decomposition, or a combination thereof of the
one or more digital objects to cause, at least in part, an
enhancement, a modification, an initiation, or a combination
thereof of one or more functions associated with the at least one
augmented reality application.
(emphasis added regarding the contested limitations).
Rejection
Claims 1-20 are rejected under 35 U.S.C. § 102 (e) as being
anticipated by Zimmerman (U.S. 2012/0113141 Al, publ. May 10, 2012).
Grouping of Claims
Based on Appellants' arguments, we decide the appeal of claims 1-5,
9-15, 19, and 20, rejected under§ 102(e), on the basis of representative
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). We address dependent claims 6-8
and 16-18, infra.
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Application 13/329,723
ANALYSIS
Claims 1-5, 9-15, 19, and 20
Issue: Under § 102( e ), did the Examiner err by finding Zimmerman
disclosed the contested limitation:
a composition, a decomposition, or a combination thereof of the
one or more digital objects to cause, at least in part, an
enhancement, a modification, an initiation, or a combination
thereof of one or more functions associated with the at least one
augmented reality application,
within the meaning of claim 1?
Regarding the claim 1 limitation "computation closures", Appellants
contend "Zimmerman is generally directed to techniques to visualize
products using augmented reality, while not remotely mentioning one or
more computation closures, and certainly not in the context of claimed
features." (App. Br. 8).
\Ve are not persuaded by ii,ppellants' contentions because they are not
commensurate with the broadest reasonable interpretation of the claim term
"computation closures." 1 2
1 "During prosecution ... the PTO gives claims their 'broadest reasonable
interpretation."' In re Bigio, 381F.3d1320, 1324 (Fed. Cir. 2004) (quoting
In re Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000)).
2 Anticipation "is not an 'ipsissimis verbis' test." In re Bond, 910 F.2d 831,
832-33 (Fed. Cir. 1990) (citing Akzo N. V. v. United States Int'! Trade
Comm'n, 808 F.2d 1471, 1479 n.11 (Fed. Cir. 1986)). "An anticipatory
reference ... need not duplicate word for word what is in the
claims." Standard Havens Prods., Inc., v. Gencor Indus., Inc., 953 F.2d
1360, 1369 (Fed. Cir. 1991).
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Appeal2014-009657
Application 13/329,723
Specifically, Appellants do not point to a definition 3 of the contested
limitation in claim 1, or in the Specification that would preclude the
Examiner's broader reading. 4 We observe paragraph 24 of the Specification
describes "computation closure" using non-limiting, exemplary language:
As used herein, the term "computation closure" identifies a
particular computation procedure together with relations and
communications among various processes including passing
arguments, sharing process results, selecting results provided
from computation of alternative inputs, flow of data and
process results, etc. The computation closures (e.g., a granular
reflective set of instructions, data, and/or related execution
context or state) provide the capability of slicing of
computations for processes and transmitting the computation
slices between devices, infrastructures and information sources.
(emphasis added).
Given this support (id.), we are not persuaded the broadest reasonable
interpretation of the claimed "computation closures" (claim 1) precludes the
Examiner's reading on Zimmerman's augmented reality system, in particular
on "Augmentation System 120." (Final Act. 7; Fig. 1, Zimmerman (i-f24),
"Augmentation System 120"). Our interpretation is consistent with the
3 Any special meaning assigned to a term "must be sufficiently clear in the
specification that any departure from common usage would be so understood
by a person of experience in the field of the invention." Multiform
Desiccants Inc. v. Medzam Ltd., 133 F.3d 1473, 1477 (Fed. Cir. 1998); see
also Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1381
(Fed. Cir. 2008) ("A patentee may act as its own lexicographer and assign to
a term a unique definition that is different from its ordinary and customary
meaning; however, a patentee must clearly express that intent in the written
description.").
4 Because "applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee." In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007) (citation omitted).
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Appeal2014-009657
Application 13/329,723
broad exemplary description of the term "computation closure" in
Appellants' Specification (i-f24). Therefore, on this record, we are not
persuaded the Examiner's interpretation is overly broad, unreasonable, or
inconsistent with the Specification.
Further regarding contested limitation of claim 1, Appellants contend:
Now here in the Zimmerman reference is there an express
teaching that a composition of the image 108 includes a
composition of the one or more virtual objects 116-b.
Further, because the Examiner alleged that the one or more
virtual objects 116-b constitute the claimed one or more digital
objects, a composition of the image 108 (that comprises an image
of the one or more virtual objects 116-b) cannot reasonably also
be considered to disclose composition of one or more digital
objects. Moreover, nowhere does Zimmerman disclose or
suggest that the virtual objects expressly are, or are required to
be, composed or decomposed.
(App. Br. 8-9).
The contested limitation of claim 1 recites alternative language that
merely requires "a composition, a decomposition, or a combination thereof
of the one or more digital objects to cause, at least in part, an enhancement, a
modification, an initiation, or a combination thereof of the functions
associated with the at least one augmented reality application." (emphasis
added).
The Examiner finds Zimmerman describes a corresponding
anticipatory method of a composition of digital objects (i.e. digital images
108 and augmentation system 120, Fig. 1, Ans. 3--4). When a claim covers
several alternatives, the claim is unpatentable if any of the alternatives
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Appeal2014-009657
Application 13/329,723
within the scope of the claim are taught by the prior art. See Brown v. 3M,
265 F.3d 1349, 1352 (Fed. Cir. 2001).
Here, we agree with the Examiner's finding the recited "composition
of ... one or more digital objects" (claim 1) is disclosed by Zimmerman's
image 108, composed of virtual objects, which "may comprise a digital or
electronic representation of a corresponding real object . ... "(Ans. 3, Final
Act. 7, Zimmerman i-fi-122, 24). We also agree with the Examiner's finding
that Zimmerman's augmentation system 120 discloses an "augmented reality
application," within the meaning of claim 1. (Id.).
Therefore, based on a preponderance the evidence, we are not
persuaded the Examiner erred. Accordingly, we sustain the Examiner's
anticipation rejection of independent claim 1, and the grouped claims which
fall therewith. See Claim Grouping, supra.
Dependent Claims 6---8 and 16--18
Dependent claim 16 recites, in pertinent part:
An apparatus of claim 13, wherein the composition, the
decomposition, or a combination thereof of the one or more digital objects
further causes the apparatus to:
determine one or more executables based, at least in part, on the
mappmg;
determine one or more execution strategies for the data, the one or
more computation closures, or a combination thereof based, at least in part,
on the one or more executables; and
determine one or more execution branches, one or more execution
options, or a combination thereof based, at least in part, on the one or more
execution strategies.
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Appeal2014-009657
Application 13/329,723
Regarding claim 16, Appellants contend "Appellants respectfully
disagree with the Examiner's assertions that any recorded moving image of
Zimmerman is inherently executable, as [a] recording [of a] moving image
need not be executable." (App. Br. 11).
In rejecting dependent claim 16, and also in rejecting dependent
claims 6, 7, and 17, the Examiner finds "[i]t is inherent that a video is
executable." (Ans. 6, Final Act. 12, 13, 22, 24, emphasis added). In
particular, the Examiner concludes the scope of the claim term "executables"
(claim 16) broadly covers Zimmerman's moving images 108. (Final Act.
22, "It is inherent that a video is executable").
We find moving images (video) are sets of data which represent the
pixels of each image frame. Although computer instruction code is
executable, the Examiner's finding that video data is inherently executable is
not supported by any further explanation, nor by any evidence in the record.
The Examiner has not fully developed the record regarding this point.
Although (additional) executable code would be required to decrypt an
encrypted video, or decompress a compressed video, the video data itself is
not executable as instruction code, e.g., by a microprocessor. The
Examiner's finding of inherency is not supported by any evidence and,
without more, is untenable.
For the aforementioned reasons, we are persuaded the Examiner erred.
Accordingly, we reverse the Examiner's anticipation rejection of dependent
claims 6, 7, 16, and 17, over Zimmerman, and claims 8 and 18, which
depend from claims 6 and 16, respectively.
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Appeal2014-009657
Application 13/329,723
DECISION
We affirm the Examiner's decision rejecting claims 1-5, 9-15, 19, and
20, under § 102( e ).
We reverse the Examiner's decision rejecting claims 6-8, and 16-18,
under§ 102(e).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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