Ex Parte White

Patent Trial and Appeal Board

Feb 12, 2018

13267531 (P.T.A.B. Feb. 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.
13/267,531 10/06/2011 Sean White 042933/410351 8833
10949 7590
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
EXAMINER
CASCHERA, ANTONIO A
ART UNIT PAPER NUMBER
2612
NOTIFICATION DATE DELIVERY MODE
02/14/2018 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN WHITE
Appeal 2017-009481
Application 13/267,5311
Technology Center 2600
Before JOHN A. EVANS, SCOTT B. HOWARD, and JASON M. REPKO,
Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 2, 4—6, 8—10, 12—14, and 16—23, which constitute all of the
claims pending in this application. Claims 3,7, 11, and 15 have been
cancelled. App. Br. 18, 20, 21 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Nokia Technologies Oy as the real party in interest.
App. Br. 2.
Appeal 2017-009481
Application 13/267,531
THE INVENTION
The disclosed and claimed invention is directed “to see-through
displays and, more particularly to a method, apparatus and computer
program product for controlling the visual representation of information
upon a see-through display.” Spec. 11.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method comprising:
causing presentation of a visual representation of
information on a see-through display, wherein the information
comprises informational content and wherein at least a portion
of the visual representation of the informational content at least
partially occludes a user's view through the see-through display;
determining, with a processor, and based on acceleration
data relating to acceleration of a device, a context associated
with the user; and
reducing occlusion of the user's view through the see-
through display attributable to the visual representation of the
informational content based on the acceleration data and the
context associated with the user, wherein reducing the
occlusion comprises causing the information to be displayed
with a reduced amount of informational content presented upon
the see-through display such that the informational content is
changed from a relatively more complex informational content
to an associated relatively lesser complex informational content
based on the acceleration data and at least an activity performed
by the user according to the context associated with the user.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Needham et al.
Abbott III et al.
Stubler et al.
US 5,623,589 Apr. 22, 1997
US 2002/0044152 Al Apr. 18, 2002
US 6,711,291 B1 Mar. 23,2004
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Application 13/267,531
REJECTIONS
Claims 1, 2, 4—6, 8—10, 12—14, 16—20, 22, and 23 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Abbott in view of
Needham. Final Act. 2—10.
Claim 21 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Abbott in view of Needham and Stubler. Final Act. 10—
11.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellant.2
We are not persuaded by Appellant’s arguments regarding the pending
claims. Instead, we incorporate herein and adopt as our own: (1) the
findings and reasons set forth by the Examiner in the action from which this
appeal is taken (Final Act. 2—11), and (2) the reasons and rebuttals set forth
in the Examiner’s Answer in response to Appellant’s arguments (Ans. 2—9).
We incorporate such findings, reasons, and rebuttals herein by reference
unless otherwise noted. However, we highlight and address specific
findings and arguments for emphasis as follows.
2 Rather than reiterate the entirety of the arguments of Appellant and the
positions of the Examiner, we refer to the Appeal Brief (filed February 13,
2017); the Reply Brief (filed June 30, 2017); the Final Office Action (mailed
August 5, 2016); and the Examiner’s Answer (mailed May 2, 2017) for the
respective details.
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Application 13/267,531
Claims 1, 2, 4—6, 8—10, 12—14, 16—20, and 22
Appellant argues the Examiner erred in finding a reason to combine
the teachings of Abbott and Needham in rejecting claim 1. See App. Br. 9—
12; Reply Br. \-A. More specifically, Appellant argues “Needham has no
relation to see-through displays or reducing occlusions on a see-through
display.” App. Br. 10 (emphasis omitted). Appellant further argues because
Abbott “relate[s] to transparent virtual reality displays, and Needham [is]
directed to navigating large volumes of content such as news stories at
different levels,” the Examiner has not provided a sufficient reason for the
combination. Id. For example, according to Appellant, “[t]here is no
description in either of Needham or Abbott for measuring nor gauging the
amount of cleanliness or clutter of a display. The Appellant can find no
evidence that applying the techniques of Needham to Abbott could lead to
an even cleaner display.” Reply Br. 2
Additionally, in the Reply Brief, Appellant argues for the first time
that “Needham would not enable one skilled in the art to modify Abbott to
display various levels of information.” Id. at 3. Therefore, according to
Appellant, “the combination of Needham with Abbott as alleged by the
Office is improper, and Appellant has not been put on notice as to how one
skilled in the art would even achieve such a combination since Abbott’s data
is not structured into various levels.” Id.
Appellant also argues for the first time in the Reply Brief that
Needham requires user input to chance the displayed level of information
that and that combining it with the teachings of Abbott “would achieve the
opposite of minimizing distraction of the transparent view to the real world
images. Indeed, the user of Abbott would be further distracted by needing to
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read and comprehend the information to make a selection. Based on this
additional rationale,. . . the combination of references is improper.” Id. at 4.
The Examiner finds that a person of ordinary skill in the art would
have combined the teachings of Abbott and Needham “in order to declutter a
display device displaying a large amount of content by not displaying an
overwhelming amount of textual information (see column 1, lines 33—39 and
column 4, lines 62— 67 of Needham et al.).” Final Act. 6—7. The Examiner
further finds it is appropriate to combine the references because “both prior
art [references] are directed to optimizations in computer graphics
interfaces.” Ans. 2. More specifically, the Examiner finds Abbott “focuses
on the application of heads-up/body mounted computer display devices
while Needham . . . discusses general computer system display devices.” Id.
The Examiner further finds Abbott “may perform a level of decluttering, the
further user interface simplification techniques as taught by Needham . . .
could surely lead to an even ‘cleaner’ user interface in Abbott. . . and one
that is changed from ‘a relatively more complex informational content [t]o
an associated relatively lesser complex informational content’ as claimed.”
Ans. 3—A.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007).
We are not persuaded by Appellant’s arguments that the Examiner
erred. Instead, we agree with the Examiner that a person of ordinary skill in
the art would have applied the teaching of Needham to the see-through
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display of Abbott. Although it is true, as Appellant argues, that Needham is
not directed see-through displays, “if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” KSR, 550
U.S. at 417. In this case, we agree that a person of ordinary skill in the art
would have seen the relationship between the reduction of content taught by
Needham and applied it to attempt to reduce occlusion in Abbott.
Furthermore, as discussed above, Appellant raises two issues—that
the combination is not enabled and that the combination would result in the
opposite of what Abbott teaches—for the first time in the Reply Brief.
Because Appellant did not raise those arguments in the opening brief and
good cause has not been shown why they should be considered, we will not
consider this argument. See 37 C.F.R. §41.41(b)(2); Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner’s rejections, but were not.”).
Appellant further argues that “[njeither Abbott nor Needham teaches
or suggest” the limitations recited in the wherein clause recites in claim 1.
App Br. 12; see also id. at 12—14; Reply Br. 4—6. Specifically, Appellant
argues “Needham only teaches displaying different levels of information in
response to a user input. There is no suggestion of providing such changes
based on the acceleration data and at least an activity performed by the user
according to the context associated with the user.” App. Br. 13 (emphasis
omitted).
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Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or ah of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
Although Appellant argues neither Abbott note Needham teaches the
wherein clause recited in claim 1, the Examiner did not rely solely on either
of those references for that limitation. Instead, the Examiner relied on a
combination of teachings of the two references. See Final Act. 5—6; Ans. 4—
5. Appellant’s argument directed to the references individually is not
persuasive.
Similarly unpersuasive is Appellant’s argument that Needham does
not teach or suggest displaying different levels of information based on
acceleration data and an activity performed by user. The Examiner finds
Abbott teaches using acceleration data and an activity to change the display.
See Final Act. 5—6; Ans. 4—5. Because Appellant’s argument is directed to
the references individually and does not address the combined teachings of
the references, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of claims 2, 4—6, 8—10, 12—14, 16—20, and 22, which are
not separately argued.
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Claim 21
Appellant argues the Examiner erred in finding Stubler teaches
“wherein reducing the occlusion comprises determining a percentage
reduction in occlusion based on an activity of the user determined according
to the acceleration data,” as recited in claim 21. App. Br. 14—15. More
specifically, Appellant argues “Stubler only teaches calculating a percentage
of pixels of text that occlude pixels in the background image,” but it does not
teach or suggest “reducing occlusion by reducing by a percentage of an
amount of informational content presented upon the see-through display.”
Id. Appellant further argues there is not motivation for the combination
because “Abbott has already provided a method to minimize obscuring
content on the see-through display.” Id. at 15.
The Examiner relies on the combination of the teachings of Abbott
and Needham for the portions of the limitations recited in claim 1 and on
Stubler for a reduction in size. See Final Act. 10—11; Ans. 6—8 (finding the
combination of Abbott, Needham, and Stubler teaches the limitations of
claim 21). Because Appellant’s argument is directed to Stubler individually
and not the combination of the three references, we are not persuaded by
Appellant’s argument that the Examiner erred.
Additionally, Appellant argues that the Examiner erred in finding a
motivation to combine because “Abbott has already provided a method to
minimize obscuring content on the see-through display.” App. Br. 15.
However, we are not persuaded by Appellant’s argument. Although a prior
art references may teach one solution to a problem, the person of ordinary
skill in the art would seek alternate solutions to improve the original product
or method. Cf. KSR, 550 U.S. at 417 (“[I]f a technique has been used to
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Application 13/267,531
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.”).
Accordingly, we sustain the Examiner’s rejection of claim 21.
Claim 23
Appellant argues the Examiner erred in finding Needham teaches the
additional limitation recited in dependent claim 23, “wherein the causing the
information to be displayed with a reduced amount of informational content
comprises changing the informational content from a story to a headline of
the story.” App. Br. 15—16. More specifically, Appellant argues “Needham
describes that when the user’s cursor leaves the area of the story, the content
is reduced to the first level of information of the story. Needham therefore
reacts to explicit input by the user.” Id. at 15. However, according to
Appellant, “[tjhere is no suggestion that the content is reduced from a news
story to a headline based on the acceleration data and at least an activity
performed by the user according to the context associated with the user.” Id.
at 15—16.
We are not persuaded by Appellant’s argument that the Examiner
erred. First, the Examiner relies on Abbott, not Needham, for teaching
reducing content in response to the “on the acceleration data and at least an
activity performed by the user according to the context associated with the
user,” as recited in claim 1. Accordingly, Appellant is improperly arguing
the references individually.
Second, to the extent that Appellant’s argument is premised on
reading the user’s selection in Needham into the modified Abbott system,
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such a reliance on bodily incorporation is unpersuasive. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference.” Keller, 642
F.2d at 425. Instead, the relevant issue is “what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”
Id.', see also In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements.” (citing In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en
banc))).
Finally, Appellant states that “[tjhere is also no motivation to combine
the user interactive navigation of news stories in Needham with the see-
through display of Abbott to arrive at a system that teaches the features of
claim 23.” App. Br. 16. Because Appellants merely conclusory state there
is no reason to combine and do not address the reason the Examiner relies on
for combining the references, we are not persuaded that the Examiner erred.
Cf. In reLovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37 requires
“more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”).
Accordingly, we sustain the Examiner’s rejection of claim 23.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1,2, 4—6, 8—10, 12—14, and 16—23.
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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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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