Ex Parte Endler et al

Patent Trial and Appeal Board

Jul 12, 2013

10820416 (P.T.A.B. Jul. 12, 2013)

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.
10/820,416 04/07/2004 Sean Christopher Endler 7114-81488-US 7822
37123 7590 07/15/2013
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
BASOM, BLAINE T
ART UNIT PAPER NUMBER
2173
MAIL DATE DELIVERY MODE
07/15/2013 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 SEAN CHRISTOPHER ENDLER,
HIROSHI YASUTOMI, and ANDY PROEHL
_____________

Appeal 2011-002475
Application 10/820,416
Technology Center 2100
______________

Before ALLEN R. MacDONALD, ROBERT E. NAPPI, and
KALYAN K. DESHPANDE, Administrative Patent Judges.

Per Curiam

DECISION ON APPEAL
Appeal 2011-002475
Application 10/820,416

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This is a decision on appeal under 35 U.S.C. § 134(a) of the rejection
of claims 1, 2, 4 through 11, 26 through 28, 30, 32 through 35, 37 through
40, and 42 through 44.

We affirm.
INVENTION
The invention is directed a method of displaying content on a flat
surface of a semi-spherical display and second content on the semi-spherical
display. 1 See pages 6 and 7 of Appellants’ Specification. Claim 1 is
representative of the invention and reproduced below:
1. A method comprising:
displaying a first content on a flat display surface within
a display;
capturing the first content with a content capturing
device;
simultaneously displaying a second content on an outside
surface of a physical spherical display surface of the display,
wherein the spherical display surface is convex; and
scrolling through one of the first content and the second
content based on instructions while displaying the other one of
the first content and the second content,
wherein the spherical display surface is imposed over the
flat display surface such that the first content and the second
content are distinctly and simultaneously viewed.

1 We note that while Appellants refer to the display surface spherical, as
seen in the drawings the display and display surface is actually disclosed as
being about ½ a sphere, see figure 6B.
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REJECTIONS AT ISSUE
The Examiner has rejected claim 11 under 35 U.S.C. § 112 second
paragraph. Answer 4-5.2
The Examiner has rejected claims 1, 2, 6, 9, 10, 11, 30, and 35 under
35 U.S.C. § 103(a) as being unpatentable over Minakuchi (U.S. 6,628,313
B1) and Fitzmaurice (U.S. 2004/0001111 A1). Answer 5-8.
The Examiner has rejected claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Minakuchi, Fitzmaurice, and Anderson (U.S. 7,107,516
B1). Answer 8-9.
The Examiner has rejected claim 5 U.S.C. § 103(a) as being
unpatentable over Minakuchi, Fitzmaurice, Anderson, and Barbieri (WO
02/21529 A1). Answer 9-11.
The Examiner has rejected claims 7 and 8 under 35 U.S.C. § 103(a) as
being unpatentable over Minakuchi, Fitzmaurice, and Ano (U.S.
2002/0030665 A1). Answer 11-12.
The Examiner has rejected claims 32 and 37 under 35 U.S.C. § 103(a)
as being unpatentable over Minakuchi, Fitzmaurice, Anderson, and Barbieri.
Answer 12-13.
The Examiner has rejected claims 33 and 38 under 35 U.S.C. § 103(a)
as being unpatentable over Minakuchi, Fitzmaurice, Anderson, Barbieri, and
Bhatia (U.S. 2004/264579 A1). Answer 13-14.

2 Throughout this opinion we refer to Appellants’ Appeal Brief dated June 7,
2010 and the Examiner’s Answer dated August 17, 2010.
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The Examiner has rejected claims 34 and 39 under 35 U.S.C. § 103(a)
as being unpatentable over Minakuchi, Fitzmaurice, Anderson, Barbieri, and
Brook (U.S. 2003/0146915 A1). Answer 14-15.
The Examiner has rejected claims 26 through 28, 42, and 43 under 35
U.S.C. § 103(a) as being unpatentable over Minakuchi, Fitzmaurice,
Anderson, Barbieri, and Ano. Answer 15-19.
The Examiner has rejected claim 44 under 35 U.S.C. § 103(a) as
being unpatentable over Minakuchi, Fitzmaurice, Anderson, Barbieri, Ano,
and Brook. Answer 20.

ISSUES
Rejection under 35 U.S.C. § 112
Appellants argue on pages 12 through 14 of the Appeal Brief that the
Examiner’s rejections under 35 U.S.C. § 112 are error. These arguments
present us with the issue did the Examiner err in finding that the Appellants’
Specification inadequately describes the structure to support the means plus
function elements of claim 11?

Rejections under 35 U.S.C. § 103
Appellants argue on pages 14 and 18 of the Appeal Brief that the
Examiner’s rejection of claim 1 under 35 U.S.C. § 103 is in error. These
arguments present us with the issue did the Examiner err in finding that the
combination of Minakuchi and Fitzmaurice teach displaying a first content
on a flat display and simultaneously displaying a second content on an
outside surface of a physical spherical display surface as recited in claim 1?
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With respect to independent claims 11 and 26, Appellants’ arguments
on pages 18 through 22 and 24 through 28 of the Brief, are virtually identical
to those discussed with respect to claim 1. With respect to the dependent
claims, Appellants argue that their rejection is in error for the reasons
asserted with respect to the independent claims. Thus, with respect to the
independent claims we are presented with this one issue.

ANALYSIS
Rejection under 35 U.S.C. § 112
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. Further, we have reviewed the
Examiner’s response to Appellants’ arguments. We disagree with
Appellants’ conclusion the Examiner erred in finding that the Appellants’
Specification inadequately describes the structure to support the means plus
function elements of claim 11.
[I]f one employs means-plus-function language in a claim, one
must set forth in the specification an adequate disclosure
showing what is meant by that language. If an applicant fails to
set forth an adequate disclosure, the applicant has in effect
failed to particularly point out and distinctly claim the invention
as required by the second paragraph of section 112.
In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)(en banc); see also
Aristocrat Technologies, Inc. v. International Game Technology, 521 F.3d
1328, 1333 (Fed. Cir. 2008). Claim 11 recites a “means for displaying a first
content,” “means for capturing the first content,” “means for simultaneously
displaying a second content,” and “means for scrolling.” The Examiner
finds that the Specification identifies several items that could be construed as
the “means for displaying” and the “means for simultaneously displaying”
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including rendering module 310. Answer 21-22. Further, the Examiner
finds that the Specification fails disclose the structure which performs the
acts associated with the “means for scrolling through one of the first content
and the second content based on instructions.” Answer 23-24. We concur.
As seen by Appellants’ statements on pages 12 and 13 of the Brief, it is the
functionality of simultaneously displaying two contents and the functionality
of scrolling between the displays that is being recited. See Appellants’
statements:
[I]n another embodiment, the client device 110 may comprise a
device having “a spherical display 520" and a "playback ring
530" and "control knob 525" (see Specification as Filed, pg. 12,
In. 19-23). The specification specifically recites that "the
spherical display 520 is configured to simultaneously display
video/image content and functional menu driven content. In one
embodiment, the spherical display 520 is configured to
simultaneously display multiple video feeds." Furthermore, the
specification recites, "The control knob 525 adjusts and controls
the content and menu of the spherical display 520 in a vertical
direction" and "the playback ring 530 rotates in both directions.
Brief 12, and:
The "rendering module 310" is one of the modules of the
system 300, which may be embodied within the electronic
device 110 (Specification as Filed, pg. 9: Ins. 4-11). The
"rendering module 310 produces signals that present content to
a viewer. In one embodiment, the signals represent content such
as audio data, image data, and a combination of audio/video
data" (pg. 9, Ins. 19-21). As stated above, the means for
displaying comprise a display device such as the display device
520 or alternative embodiments such as a screen, a monitor, a
projector and the like, collectively referred to as the client
device 110.
Brief 13. The modules of the system 300 are merely described in
Appellants’ Specification as performing the function, and Appellants have
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not provided any specific description of how they perform those functions.
For example page 9 of Appellants’ Specification discusses the invention as
being performed either on the device 110 or a server 300 each of which
contain a processor which has modules. Specification 9, Figure 3. The
Specification identifies that these devices include instructions for
customized presentation of the content through the spherical display, but the
Specification does not provide disclosure of specific instructions or
algorithms that are used to perform the function, nor does the Specification
present evidence that specific instructions or algorithms are conventionally
known. Specification 8.
The Federal Circuit has stated that simply disclosing a general
purpose computer as the structure to perform the claimed function does not
meet the corresponding structure requirement of 35 USC § 112 sixth
paragraph. Aristocrat Techs. Austl. Pty Ltd. v. Inter Game Tech., 521 F3d
1328, 1333 (Fed Cir 2008). Rather, “[T]he corresponding structure for a §
112 paragraph 6 claim for a computer-implemented function is the algorithm
disclosed in the specification.” Id. (citing Harris Corp. v. Ericsson Inc. 417
F.3d 1241, 1249 (Fed. Cir. 2005). Here as Appellants’ Specification does
not provide a specific set of instructions or algorithm for performing the
claimed functions, we concur with the finding that the Appellants’
Specification inadequately describes the structure to support the means plus
function elements of claim 11 and we sustain the Examiner’s rejection of
claim 11 on this basis.

Appeal 2011-002475
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Rejections under 35 U.S.C. § 103
We have reviewed the Examiner’s current rejections in light of
Appellants’ arguments that the Examiner has erred.
We disagree with Appellants’ conclusion that the Examiner erred in
finding that the combination of Minakuchi and Fitzmaurice teach displaying
a first content on a flat display and simultaneously displaying a second
content on an outside surface of a physical spherical display surface of the
display. The Examiner has provided a comprehensive response on pages 24
through 29 of the Answer. We have reviewed this response and consider it
to be supported by ample evidence. Accordingly, we adopt as our own
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer in response to Appellants’ Appeal Brief. Thus,
we concur with the conclusions reached by the Examiner and sustain the
Examiner’s rejections claims 1, 2, 4 through 11, 26 through 28, 30, 32
through 35, 37 through 40, and 42 through 44 under 35 U.S.C. § 103 .

DECISION
The decision of the Examiner to reject claims 1, 2, 4 through 11, 26
through 28, 30, 32 through 35, 37 through 40, and 42 through 44 is affirmed.
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

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ELD