Ex Parte Piccionelli et al

Patent Trial and Appeal Board

Mar 12, 2018

11368348 (P.T.A.B. Mar. 12, 2018)

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.
11/368,348 03/03/2006 Gregory A. Piccionelli 39003.820US01 4544
115785 7590 03/12/2018
Gregory A. Piccionelli
30801 Calaise Court
Westlake Village, CA 91362
EXAMINER
BODDIE, WILLIAM
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
03/12/2018 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 GREGORY A. PICCIONELLI and MICHAEL M. GERARDI
____________

Appeal 2017-009794
Application 11/368,348
Technology Center 2600
____________

Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s decision to reject claims 1–35, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellants’ invention provides a virtual image to a human viewer
when the human viewer views an object, such as a billboard, on which a

1 Appellants identify the real party of interest as the inventors Gregory A.
Piccionelli and Michael M. Gerardi. App. Br. 1.
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blank surface is defined. Spec. 1. Appellants’ Figure 1A is illustrative and
is reproduced below.

Figure 1A “illustrate[s] a first embodiment of a method according to the
invention in which a human viewer in a vehicle [12] moving with respect to
a billboard [10] is provided with visual information.” Id. at 4.

According to the Specification, “[a] range of distances (as shown,
from zero to a maximum distance Rm) and a range of viewing angles (as
shown, from m to -m) are defined with respect to the surface of billboard
10.” Id. at 6. Claim 1, reproduced below, is illustrative:
1. A method of providing visual information to a human
viewer, the method comprising the steps of:
a) defining a range of distances from a surface and a
range of viewing angles with respect to the surface,
b) determining the location and viewing angle of a
human viewer with respect to the surface, and
c) providing a virtual image to the human viewer via a
visual display device worn by the human viewer when the
location and viewing angle of the human viewer with respect to
the surface is determined to be within the range of distances and
viewing angles selected in step a), such that the virtual image is
perceived by the human viewer to be within an area defined on
the surface.
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THE REJECTIONS
The Examiner rejected claims 1–5, 7, 19, 20, 27, and 33–35 under
35 U.S.C. § 102(b) as being anticipated by Triebfuerst (US 2004/0046711
A1; Mar. 11, 2004). Non-Final Act. 2–3.2
The Examiner rejected claims 6, 8, and 28 under 35 U.S.C. § 103(a)
as unpatentable over Triebfuerst and Benton (US 6,917,370 B2; July 12,
2005). Non-Final Act. 3–4.
The Examiner rejected claim 9–18, 21–26, and 29–32 under 35 U.S.C.
§ 103(a) as unpatentable over Triebfuerst and Dempski (US 7,050,078 B2;
May 23, 2006). Non-Final Act. 4–5.

THE ANTICIPATION REJECTION
The Examiner finds that Triebfuerst discloses every recited element of
independent claim 1 including, among other things, defining a range of
distances from a surface and a range of viewing angles with respect to the
surface. Non-Final Act. 2 (citing Triebfuerst ¶¶ 19, 33; Figs. 1–2); Second
Second Ans. 3–4. According to the Examiner, Triebfuerst’s service
technician, to be able to see service components, must be in a defined range

2 We note that two separate Examiner’s Answers were mailed after a
supplemental Appeal Brief was filed on January 20, 2017. See present
Appl’n 11/368,348, Examiner’s Answer mailed April 20, 2017, at 2 (“First
Ans.”); Examiner’s Answer mailed May 8, 2017, at 2 (“Second Ans.”). The
subsequent Examiner’s Answer contains an additional sentence in the
Response to Arguments section. Compare First Ans. 4, with Second Ans. 4.
Throughout this opinion, we refer to (1) the Non-Final Rejection mailed
May 19, 2016 (“Non-Final Act.”); (2) the supplemental Appeal Brief filed
January 20, 2017 (“App. Br.”); (3) the Second Ans.; and (4) the Reply Brief
filed July 10, 2017 (“Reply Br.”).
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of distances and viewing angles with respect to the service components.
Second Ans. 4.
Appellants argue, among other things, that Triebfuerst does not define
a range of distances from a surface and a range of viewing angles with
respect to the surface. App. Br. 9; Reply Br. 4.

ISSUE
Under § 102, has the Examiner erred in rejecting claim 1 by finding
that Triebfuerst defines a range of distances from a surface and a range of
viewing angles with respect to the surface?

ANALYSIS
Claims 1–5, 7, 19, and 20
We begin with claim construction. When claim terminology is
construed in the United States Patent and Trademark Office (USPTO),
claims are to be given their broadest reasonable interpretation consistent
with the specification, reading claim language in light of the specification as
it would be interpreted by one of ordinary skill in the art. See In re Am.
Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Claim 1
recites, in pertinent part, defining a range of distances from a surface and a
range of viewing angles with respect to the surface. Therefore, to resolve
the question of patentability under § 102, we construe the term “defining.”
The specification “is always highly relevant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term.” Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
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1576, 1582 (Fed. Cir. 1996)). Here, various passages of Appellants’
Specification include variations of the term “defining.” Spec. 1, 8
(providing a virtual image when a viewer viewing a billboard on which a
blank surface is defined); id. at 2, 7–8, 11 (a virtual image is perceived to be
defined on a surface by a human viewer); id. at 2–3, 8 (a surface upon which
a virtual image appears to be defined); id. at 4 (a magazine page having “a
blank surface defined on at least a portion thereof”). Although these
passages from the Specification do not define explicitly the term “defining,”
they nevertheless inform our construction of the term as at least consistent
with the definition of “to make distinct, clear, or detailed esp. in outline.”
MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 303 (vt. def. 2a) (10th ed.
1993). Nor do we find the Specification’s passage directed to a range of
distances and viewing angles defined with respect to a billboard’s surface
(Spec. 6) to be inconsistent with our construction of the term “defining.”
Thus, under its broadest reasonable interpretation consistent with the
Specification, “defining” is simply making distinct.
It is well settled that the burden of establishing a prima facie case of
anticipation resides with the USPTO. See In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984). That burden includes pointing out where each
element of the claimed invention, arranged as required by the claim, is
described identically in a single prior art reference, either expressly or under
the principles of inherency. See generally In re Spada, 911 F.2d 705, 708
(Fed. Cir. 1990).
With the above construction of the term “defining,” we see no error in
the Examiner’s finding that Triebfuerst’s head-mounted display effectively
defines a range of distances from a machine tool’s surface and a range of
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viewing angles with respect to the machine tool’s surface. See Non-Final
Act. 2; Second Ans. 3–4. Triebfuerst’s Figures 1 and 2 are illustrative and
reproduced below:

Triebfuerst’s Figure 1 shows a service technician 1 viewing a machine tool
9’s defective component 15 while wearing a head-mounted display 2.
Triebfuerst ¶¶ 19, 32–33. Triebfuerst’s Figure 2 shows the service
technician 1’s field of vision 8 in an object-dependent representation. Id.
¶¶ 29, 34.

Triebfuerst’s Figure 2 shows the service technician 1’s field of vision
8 including the machine tool 9’s defective component 15 within the central
field of vision. Id. ¶ 34. Although not shown in Figure 2, Triebfuerst’s
machine tool 9 includes a marker 6 on its surface. Id. ¶ 33; Fig. 1.
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Appellants admit “a single range from when the [marker] is visible to the
camera to the surface of the item is inherently used.”3 Reply Br. 4.
Appellants further admit “the angle that the [marker] is viewable to the
camera from one side to the other side [is inherent].” Id. Consistent with
Appellants’ admission (id.), as seen in Figure 1, Triebfuerst’s technician 1 is
located at a particular distance and viewing angle with respect to the
machine tool 9’s surface.
But this particular viewing angle and distance is within the inherent
range of distances and viewing angles that collectively define the field of
vision 8 in Figure 2. That is, there must be a defined (i.e., distinct) range of
viewing angles and distances with respect to the surface that establish the
technician’s field of vision—both central and peripheral—in which objects
are detected. See Triebfuerst ¶ 34 (noting that the technician sees the
component 15 identified by the circle 14 in his central field of vision, and
registers the textual instructions in his peripheral field of vision); see also id.
¶ 19 (“Objects in the field of vision of the user are detected and recognized
by the system.”). Accord Ans. 4 (noting that the technician must be within
the range of distances and viewing angles with respect to the surface to be
able to see object 9, its associated component 15, and the superimposed
virtual information 3).
But when the technician moves his head away from the object, the
information 3 is removed from the display and, therefore, removed from the

3 Appellants further admit “that distance is DEFINED,” but argue that “[n]o
other distances are defined either.” Id. (emphasis added). Accordingly, we
treat Appellants’ statement that the defined distance between Triebfuerst’s
camera and item surface not as an admission, but as an argument with an
apparent typographical error.
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technician’s field of vision. Triebfuerst ¶ 34. Although Triebfuerst does not
specify the exact extent of this head movement “away” from the object, the
viewing distances and angles that define the technician’s field of vision must
nevertheless differ from the field of vision shown in Figure 2; otherwise, the
information would not be removed in the object-dependent mode. See id. In
other words, when the technician moves his head away from the object in
this mode, he is no longer within the defined range of distances and viewing
angles with respect to the surface that enable him to see the component and
its associated text.
Appellants’ contention that because paragraphs 33 and 34 of
Triebfuerst do not explicitly include the terms “range,” “ranges,” or
“viewing angles,” Triebfuerst does not disclose the disputed limitation
(App. Br. 9) is unavailing. It is well settled that to anticipate, “the reference
need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331,
1334 (Fed. Cir. 2009) (citing In re Bond, 910 F.2d 831, 832–33 (Fed. Cir.
1990)).
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 1, and claims 2–5, 7, 19, and 20 not argued separately with
particularity.

Claims 27 and 33–35
We sustain the Examiner’s rejection of claims 27 and 33–35.
Appellants’ arguments regarding independent claim 1 noted above are not
commensurate with the scope of independent claims 27 and 33 despite
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Appellants arguing these claims together with independent claim 1. See
App. Br. 9; Reply Br. 4.
Unlike claim 1, independent claims 27 and 33 do not recite defining a
range of distances from a surface and a range of viewing angles with respect
to the surface. Despite these differences, however, Appellants do not argue
claims 27 and 33 separately with particularity, but rather argue these claims
together with claim 1. Because claims 27 and 33 are not argued separately
with particularity, we are, therefore, not persuaded that the Examiner erred
in rejecting those claims, or dependent claims 34 and 35 for similar reasons.

THE OBVIOUSNESS REJECTIONS
We also sustain the Examiner’s obviousness rejections of claims 6, 8–
18, 21–26, and 28–32. Non-Final Act. 3–4. Because these rejections are not
argued separately with particularity, we are not persuaded of error in these
rejections for the reasons previously discussed.

CONCLUSION
On this record, the Examiner did not err in rejecting (1) claims 1–5, 7,
19, 20, 27, and 33–35 under § 102(b); and (2) claims 6, 8–18, 21–26, and
28–32 under § 103.

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DECISION4,5
The Examiner’s decision in rejecting claims 1–35 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). See 37 C.F.R.
§ 41.50(f).

AFFIRMED

4 We note in passing that “the range of distances and viewing angles selected
in step a),” as recited in claim 1, lines 9–10, is inconsistent with the range of
distances and viewing angles defined in step a) of lines 3–4. We leave the
question of whether this inconsistency renders the claim indefinite to the
Examiner.

5 We also leave to the Examiner to consider, in light of the conditional term
“when” in method claims 1 and 27, whether the associated limitations need
to be performed if the condition precedent “when” is not satisfied. See
MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) § 2111.04(II) (9th ed.
Rev. 08.2017, Jan. 2018) (citing Ex parte Schulhauser, No. 2013-007847
(PTAB Apr. 28, 2016) (precedential)).