Josiah Eatedali et al.

Patent Trials and Appeals Board

Jan 3, 2020

15042543 - (D) (P.T.A.B. Jan. 3, 2020)

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.
15/042,543 02/12/2016 JOSIAH EATEDALI 15-DIS-422-
STUDIO-US-UTL
8235
94472 7590 01/03/2020
DISNEY ENTERPRISES, INC.
c/o Sheppard Mullin Richter & Hampton LLP
650 Town Center Drive, 10th Floor
Costa Mesa, CA 92626
EXAMINER
HICKEY, DIANA S
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
SheppardMullin_Pair@firsttofile.com
docketing@sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSIAH EATEDALL, JAMES P. MADDEN, and
MARK ARANA
____________

Appeal 2018-007253
Application 15/042,543
Technology Center 2600
____________

Before CATHERINE SHIANG, JOHN P. PINKERTON, and
SCOTT E. BAIN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4–11, and 13–20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Disney Enterprises, Inc. as the real party in interest.
Appeal Br. 1.

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Application 15/042,543

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STATEMENT OF THE CASE
Introduction
The present invention relates to “augmented reality (AR)/virtual
reality (VR) presentations.” Spec. ¶ 1. In particular,
[i]n accordance with one embodiment, a computer-implemented
method comprises presenting a simulated audio/visual (A/V)
experience to a passenger of a vehicle. The computer-
implemented method further comprises obtaining trip criterion
relevant to the vehicle. Further still, the computer-implemented
method comprises adapting the simulated A/V experience based
upon the trip criterion.

Spec. ¶ 3. Claim 1 is exemplary:

1. A computer-implemented method, comprising:
presenting a simulated audio/visual (A/V) experience to a passenger
of a vehicle;
obtaining trip criterion relevant to the vehicle; and
adapting the simulated A/V experience based upon the trip criterion,
wherein the simulated A/V experience comprises an augmented reality (AR)
story-telling narrative.2

References and Rejection3

2 Appellant submitted an after final amendment, which amends claims and
cancels claim 13. See After Final Amendment Dated August 23, 2017. The
Examiner has not entered that amendment. See Advisory Act. August 23,
2017 p.1.
3 Throughout this opinion, we refer to the (1) Final Office Action dated June
27, 2017 (“Final Act.”); (2) Appeal Brief dated Jan. 8, 2018 (“Appeal Br.”);
(3) Examiner’s Answer dated June 14, 2018 (“Ans.”); and (4) Reply Brief
dated July 6, 2018 (“Reply Br.”).
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Application 15/042,543

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Claims
Rejected
35 U.S.C. § References
1, 2, 4–11,
13–20
103

Daily (US 8,838,384 B1; Sep. 16, 2014), Mullen
(US 2006/0105838 A1; May 18, 2006)

ANALYSIS
Claims 1, 2, 4–11, and 13–15
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We are persuaded by Appellant’s
arguments that the Examiner erred in determining the cited portions of Daily
and Mullen collectively teach “adapting the simulated A/V experience based
upon the trip criterion, wherein the simulated A/V experience comprises an
augmented reality (AR) story-telling narrative,” as recited in independent
claim 1 (emphases added). See Appeal Br. 6–11; Reply Br. 2–5.
The Examiner maps the claimed “simulated A/V experience” to
Daily’s audio navigational guide, in order to show Daily teaches “adapting
the simulated A/V experience based upon the trip criterion”:

Daily (col 2 Ins 25-67) discloses adjusting the audio of
the navigational cues based on the activity of the vehicle. For
example, when the vehicle is to turn left, Daily discloses
adjusting the audio output such that the cue simulates a speaker
sitting to the left of the user. Such an adjustment falls within the
limitations of the claims when read in light of the specification.
It is an adaptation of the simulated experience (i.e. the audio
navigational guide) based on the trip criterion (i.e. the left turn
made by the vehicle).

Ans. 3 (emphases added); see also Final Act. 4.
In the Answer, the Examiner makes different findings, namely,
mapping the claimed “simulated A/V experience” to Mullen’s “passenger of
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the vehicle playing a game” instead, in order to show the references
collectively teach the limitation “the simulated A/V experience comprises an
augmented reality (AR) story-telling narrative”:
Paragraph [0056] of Mullen describes virtual advertising
in a virtual game setting. While Daily and Mullen can be
combined in the McDonalds example above, the combination
can work for a passenger of the vehicle playing a game as
disclosed in Mullen augmented by the location-based audio
cues disclosed in Daily.

Ans. 5 (emphasis added); see also Final Act. 4.
Because the Examiner inconsistently maps the claimed “simulated
A/V experience” to different disclosures and has not adequately supported
either mapping, she has not sufficiently explained how Daily and Mullen
collectively teach “adapting the simulated A/V experience based upon the
trip criterion, wherein the simulated A/V experience comprises an augmented
reality (AR) story-telling narrative,” as required by independent claim 1
(emphases added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner’s rejection of independent claim 1.4
Regarding independent claim 10, similar to the discussions above, the
Examiner inconsistently maps the claimed “simulated A/V experience” to
different disclosures and has not adequately supported either mapping. See
Final Act. 7–8. Therefore, for similar reasons, we reverse the Examiner’s
rejection of independent claim 10.

4 If prosecution reopens, we leave it to the Examiner to determine whether
the claims are obvious in light of the collective teachings of Mullen and
Daily, using Mullen as the primary reference.
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We also reverse the Examiner’s rejection of corresponding dependent
claims 2, 4–9, 11, and 13–15.

Claims 16–20

Appellant argues “[i]ndependent claim[] . . . 16 recite[s] the same or
similar limitations as those recited in independent claim 1. For at least the
reasons set forth above, the alleged combination of Daily and Mullen fail to
teach or suggest each and every limitation recited in independent claim[] . . .
16.” Appeal Br. 12.
Appellant’s arguments are not commensurate with the scope of claim
16, as Appellant has not shown claim 16 indeed recites “the same or similar
limitations as those recited in independent claim 1” (Appeal Br. 12).
Further, Appellant’s arguments are not directed to the Examiner’s specific
findings about claim 16, which are very different from the findings about
claim 1. See Final Act. 4–5, 11–12.5
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claim 16.
We also sustain the Examiner’s rejection of corresponding dependent
claims 17, 19, and 20, as Appellant does not advance separate substantive
arguments about those claims. See 37 C.F.R. § 41.37(c)(1)(iv).

Regarding dependent claim 18, Appellant argues:

claim 13 requires that the AR story-telling narrative is
developed with predetermined events requiring a kinetic

5 The Examiner cites Mullen for all of the limitations of claim 16. See Final
Act. 11–12. As a result, it is unnecessary to combine the teachings of Daily
and Mullen for rejecting claim 16.
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response. Claim 18 recites a similar limitation, i.e.,
“synchronization of the simulated AR story-telling experience
with the navigational and motion information comprises at least
one of justifying the simulated AR story-telling experience with
the navigational and motion information ....”
. . . .

However this [Mullen disclosure] does not amount to
“developing” an AR story-telling narrative based pre-
determined events that require a kinetic response as discussed
above. Mullen is merely describing old and well known
synchronization of user control to a game character.

Appeal Br. 12–13; see also Reply Br. 5–7.
Appellant’s arguments are not commensurate with the scope of claim
18, as Appellant has not shown claim 18 indeed requires “‘developing’ an
AR story-telling narrative based pre-determined events that require a kinetic
response” (Appeal Br. 13).6
Because Appellant has not persuaded us the Examiner erred, and for
similar reasons discussed above about claim 16, we sustain the Examiner’s
rejection of dependent claim 18.
CONCLUSION
We reverse the Examiner’s decision rejecting claims 1, 2, 4–11, and
13–15 under 35 U.S.C. § 103.
We affirm the Examiner’s decision rejecting claims 16–20 under
35 U.S.C. § 103.
In summary:

6 To the extent Appellant advances new arguments about the actual
limitations of claim 18 in the Reply Brief, such arguments are untimely, as
Appellants has not demonstrated any “good cause” for the belated
presentation. See 37 C.F.R. § 41.41(b)(2).
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–11,
13–20
103 Daily, Mullen 16–20

1, 2, 4–11,
13–15

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). See 37
C.F.R. § 41.50(f).
AFFIRMED IN PART