Ex Parte Knighton et al

Patent Trials and Appeals Board

Mar 27, 2013

10947465 - (R) (P.T.A.B. Mar. 27, 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.
10/947,465 09/21/2004 Mark S. Knighton 4956P003C 1029
8791 7590 03/27/2013
BLAKELY SOKOLOFF TAYLOR & ZAFMAN
1279 Oakmead Parkway
Sunnyvale, CA 94085-4040
EXAMINER
CZEKAJ, DAVID J
ART UNIT PAPER NUMBER
2487
MAIL DATE DELIVERY MODE
03/27/2013 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 MARK S. KNIGHTON,
DAVID S. AGABRA, and
WILLIAM D. MCKINLEY
____________________

Appeal 2011-004127
Application 10/947,465
Technology Center 2400
____________________

Before THU A. DANG, JAMES R. HUGHES,
and GREGORY J. GONSALVES, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Application 10/947,465

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I. STATEMENT OF THE CASE
Appellants have filed a Request for Rehearing under 37 C.F.R.
§ 41.52(a)(1) (hereinafter “Request”), on February 27, 2013, for
reconsideration of our Decision mailed December 31, 2012 (hereinafter
“Decision”) with respect to claims 1-17 (Request 1).
The Decision affirmed the Examiner’s rejections of claims 1-17
under 35 U.S.C. § 103(a) as being unpatentable over Dimsdale in view of
Crampton (Decision 11).
We have reconsidered our Decision of December 31, 2012 regarding
claims 1-17 in light of Appellants’ comments in the Request, and we find
Appellants have not identified any points misapprehended or overlooked by
the Board in our Decision therein. We decline to change our Decision for
the reasons discussed infra.

II. ISSUES
We address the following contentions raised by Appellants in the
Request:
1. Appellants contend that “[t]he Board continues its analysis
assuming the truth of [the Examiner’s finding] independent of the fact that
Crampton explicitly teaches only the access to the avatar (not the generated
data)” and “[p]roviding access to data which has been processed into a
different form (here the avatar) is not in any manner the same as providing
access to the raw data that was captured” (Request 1-2). In particular,
Appellants contend that “[t]he assertion that Crampton provides access to
captured data is entirely erroneous” (Request 1).
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2. Appellants argue that “the Board fails to meaningfully address
the integration of the communication module with the capture module”
(Request 2). In particular, Appellants argue that “the capture module [of
Dimsdale], the FDV module, is [not] integrated with the communication
module” (id.).
3. Appellants contend further that “the Board has merely adopted
the Examiner's position without articulating where in the reference an
identification of points of interest occurs” (Request 3).
4. Appellants finally argue that “claim 15 requires that the capture
module both drive the capture unit and also control the orientation” and
“[n]othing in Crampton teaches or suggests that the turntable is controlled
by the capture unit” (Request 3).
As to Appellants’ contentions 1and 2, the issue we address on this
Request is whether Appellants have identified that the Board has misapplied
the relevant law regarding claim interpretation and misapprehended the
Appellants’ argument by finding that the combination of Dimsdale and
Crampton at least suggests “a communications module integrated with the
capture module to communicate the three-dimensional (3D) data over a
distributed network” and “a control module to manage captured content and
access to the three dimensional data based on user authorization” as recited
in claim 1.
As to Appellants’ contention 3, the issue we address on this Request is
whether Appellants have identified that the Board has misapplied the
relevant law regarding claim interpretation and misapprehended the
Appellants’ argument by finding that the combination of Dimsdale and
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Crampton at least suggests “wherein the capture module to identify points of
interest to re-capture” as recited in claim 14 similarly recited in claim 17.
As to Appellants’ contention 4, the issue we address on this Request is
whether Appellants have identified that the Board has misapplied the
relevant law regarding claim interpretation and misapprehended the
Appellants’ argument by finding that the combination of Dimsdale and
Crampton at least suggests “wherein the capture module to control
orientation of the physical object” as recited in claim 15.

III. ANALYSIS
As to Appellants’ contention 1, as set forth in our Decision, Dimdale’s
host computer provides access to captured 3D image data (FF 3; Decision 6).
In addition, Crampton’s server grants a user access to the computer model
generated using captured 3D image data based upon user authorization (FF 4
and 5, Decision 7). Although Appellants contend that “[t]he assertion that
Crampton provides access to captured data is entirely erroneous” (Request
1), we found that it is the combined teachings of both references would have
at least suggested the claimed limitation. That is, as set forth in our
Decision, we found the combination of Dimsdale and Crampton would have
at least suggested providing user access to the captured 3D image data based
upon user authorization (Decision 6-7).
As to Appellants’ contention 2 regarding the new argument raised by
Appellants in the Request for Rehearing, only those arguments actually
made by Appellants are considered in our Decision. Arguments which
Appellants could have made but chose not to make in the Briefs were not
been considered and deemed to be waived. See 37 C.F.R. § 41.37 (c)(1)(vii)
(2008).
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In particular, although Appellants additionally contend that “the
capture module [of Dimsdale], the FDV module, is [not] integrated with the
communication module” (Request 2), we note that this argument could have
been raised in the Appeal Brief. It is inappropriate for Appellants to discuss
for the first time in a Request for Rehearing matters that could have been
raised in the Appeal Brief. “The failure to raise all issues and arguments
diligently, in a timely fashion, has consequences.” Ex parte Borden, 93
USPQ2d 1473, 1475 (BPAI 2010) (informative decision). Cf. Kaufman Co.
v. Lantech, Inc., 807 F.2d 970, 973 n.* (Fed. Cir. 1986) and McBride v.
Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986). That
is, the Examiner’s Answer contain the same findings as those set forth in the
Final Rejection, thus, the Examiner’s Answer and our Decision affirming the
Examiner’s rejection do not necessitate this new argument by Appellants.
Furthermore, even in light of the new argument raised, as set forth in
our Decision, we found that “the FDV module [of Dimsdale] is in
communication with the host computer over a distributed network” and
therefore, the host computer comprises “a communication module integrated
with the capture module to communicate the 3D data over a distributed
network” (Decision 6). That is, we find that the communication between the
FDV module and the host computer comprises an integration between the
communication module and the capture module over the distributed
network.
As to Appellants’ contention 3, as set forth in our Decision, in light of
the absence of the definition of “points of interest,” “we give ‘the capture
module to identify points of interest to re-capture’ its broadest reasonable
interpretation as a module that indicates data to be captured again” (Decision
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10). Accordingly, contrary to Appellants’ contention that “the Board has
merely adopted the Examiner's position without articulating where in the
reference an identification of points of interest occurs” (Request 3), we did
indeed consider all of Appellants’ arguments and found no error in the
Examiner’s finding of obviousness over Dimsdale in view of Crampton
(Decision 10). In particular, “Crampton discloses the recapturing of data
when the outline of the object is not continuous” (id.). That is, we found
that Crampton discloses a “capture module to identify points of interest to
re-capture” since requesting a recapture of the image data comprises “a
module that indicates data to be captured again” (id.).
As to Appellants’ contention 4, as set forth in our Decision, we found
that the turn table controls the orientation of the individual (object) standing
upon it” (Decision 11), not that “the turntable is controlled by the capture
unit” as Appellants contend (Request 3). In particular, the system includes a
booth and control system (capture module) which includes the table that
controls the orientation of the object (FF4 and 6). Accordingly, we found no
error in the finding that “Crampton’s system comprises a ‘capture module to
control orientation of the physical object’” (Decision 11).

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IV. CONCLUSION
We have carefully considered the arguments raised by Appellants in
the Request for Rehearing, but none of these arguments are persuasive that
our original Decision was in error. We are still of the view that the
invention set forth in claims 1-17 is unpatentable over the applied prior art
based on the record before us in the original appeal. This Decision on
Appellants’ Request for Rehearing is deemed to incorporate our earlier
Decision (mailed December 31, 2012) by reference. See 37 C.F.R.
§ 41.52(a)(1).

V. DECISION
We have granted Appellants’ request to the extent that we have
reconsidered our Decision of December 31, 2012, but we deny the request
with respect to making any changes therein.

REHEARING DENIED

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