MICROSOFT TECHNOLOGY LICENSING, LLC

Patent Trials and Appeals Board

Dec 17, 2021

2020006294 (P.T.A.B. Dec. 17, 2021)

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.
15/616,883 06/07/2017 Philip Andrew EDRY MS1-9047US 4636
142810 7590 12/17/2021
Newport IP, LLC
1400 112th Ave SE
Suite 100
Bellevue, WA 98004
EXAMINER
FLANDERS, ANDREW C
ART UNIT PAPER NUMBER
2655
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
docketing@newportip.com
eofficeaction@appcoll.com
scott@newportip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILIP ANDREW EDRY, TODD R. MANION, ROBERT
NORMAN HEITKAMP, and STEVEN WILSSENS
____________________

Appeal 2020-006294
Application 15/616,883
Technology Center 2600
____________________

Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
MATTHEW J. McNEILL, Administrative Patent Judges.

KUMAR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–10, and 12–20. Claim 21 has been indicated to
contain allowable subject matter. Final Act. 14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s Invention
Appellant’s invention relates to a system for streaming video services.
See Spec. ¶ 5.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Microsoft Technology Licensing,
LLC is the real party in interest. Appeal Br. 3.
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Illustrative Claim
Claim 1, reproduced below (bracketed material added), is
representative of the subject matter on appeal.
1. A computing device, comprising:
a processor;
a memory having computer-executable instructions stored
thereupon which, when executed by the processor, cause the
computing device to
[a] receive session data defining a virtual reality
environment comprising a participant object, the session data
allowing a participant to provide a participant input for
controlling a location of the participant object and a direction of
the participant object,
[b] generate a first view for display to the participant, the
first view originating from the location of the participant object
controlled by the participant, wherein a direction of the first
view is based on the direction of the participant object,
[c] generate a spectator view for display on a computing
device associated with a spectator, the spectator view
originating from the location of the participant object that is
controlled by the participant input, wherein a direction of the
spectator view is controlled by a spectator input, and
[d] generate a spectator audio output signal of a stream,
wherein the spectator audio output signal causes an output
device to emanate an audio output of the stream from a speaker
object location positioned relative to the spectator, the speaker
object location based on the direction of the spectator view that
is controlled by the spectator input and the location of an audio
object relative to the location of the participant object.
Appeal Br. 27 (Claims App.).

REFERENCES AND REJECTIONS

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Name Reference Date
Mehta et al. US 2015/0223002 A1 Aug. 6, 2015
Long et al. US 2017/0157512 A1 June 8, 2017

Claims 1–10 and 12–20 are rejected under 35 U.S.C. 103 as being
unpatentable over Long and Mehta. Final Act. 6.

Appellant’s Contentions2
Appellant contends that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a), because Long “generally describes capabilities of
devices in a glossary format” (Reply Br. 6) (emphasis added), and a
“generalized discussion of a game environment and spatial audio effects do
not establish a prima facie case of obviousness.” Id. at 8, (emphasis added).
In particular, Appellant contends:
[1] Long [0057] merely defines the term “location.” Long
[0094] discloses that a game server may be used. There is no
teaching in these passages of a user input for controlling the
location of a game object, let alone a participant object.
. . . .
[2] These references generally describe a game server and the
ability to capture game play, but do not teach or suggest a view
originating from the location of a participant object, or a view
controlled by a user.
. . . .
[3] the view described in the citation from Long is a “third
person perspective.” In contrast, claim 1 recites a first view that

2 Throughout this Decision, we refer to the Appeal Brief filed May 13, 2020,
(“Appeal Br.”); Final Office Action mailed Jan. 22, 2021, (“Final Act.”); the
Examiner’s Answer mailed July 15, 2020, (“Ans.”); and the Reply Brief
filed Sept. 8, 2020, (“Reply Br.”)
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originates “from the location of the participant object controlled
by the participant.”
. . . .
[4] What Long actually teaches is a virtual reality (VR) view
that is presented from various locations of a game
environment . . . However, Long does not teach or suggest that
the participant input controls the location of the spectator view,
and where the spectator input controls the direction of the
spectator view.
. . . .
[5] The cited documents fail to teach or suggest “the speaker
object location based on the direction of the spectator view that
is controlled by the spectator input and the location of an audio
object relative to the location of the participant object”
. . . .
[6] Mehta generally teaches 3D audio technologies and is silent
with respect to video generation from spectator views. . . .
Mehta, only discuss a flexibility in speaker location and audio
objects and does not address spectator audio or the direction of
the audio relative to a spectator and controlled by spectator
input.
. . . .
[7] it is unclear that the addition of Mehta, which describes a
directional physical speaker system, would provide any benefit
to the system of Long, which is a full virtual gaming
environment system. . . . the problems being addressed by Long
and Mehta are entirely different, and Applicant submits that
there is no motivation to combine these references.
Appeal Br. 14–22 (italics omitted) (bracketed material added).

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Analysis3
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments that the Examiner has erred. We disagree with Appellant’s
conclusions. We highlight and address specific findings and arguments
regarding representative claim 1 for emphasis as follows.
As an initial matter, regarding Appellant’s above “glossary format”
contention, an ordinarily skilled artisan is not compelled to blindly follow
the teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984). “[T]he analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR, 550 U.S. at 418.
The Examiner finds that Long teaches all elements of exemplary
claim 1 (Final Act. 6–8), except for element [d] for which the Examiner
relies upon Mehta (Final Act. 9, 10).
As to Appellant’s contentions [1] to [6], Appellant’s arguments in the
Appeal Brief are deficient because the arguments do not rebut distinctly and
specifically the Examiner’s findings regarding the Long and Mehta
references. In order to rebut a prima facie case of unpatentability, Appellant
must point out the supposed Examiner errors distinctly and specifically, and
the specific distinctions believed to render the claims patentable over the
applied references. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement which

3 Independent claims 8 and 15 are argued together with claim 1. Appeal Br.
13–23. Claims 3–5, 7, 9, 10, 12–14, and 16–20 are not argued separately
and will not be addressed separately.
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merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require 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.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
In the Answer, the Examiner has provided a comprehensive response,
supported by sufficient evidence, to each of the contentions [1] to [6] raised
by Appellant. We adopt as our own the findings and reasons set forth by the
Examiner in the Answer in response to Appellant’s Appeal Brief (see
Ans. 14–25).
For example, in response to Appellant’s contention [1], the Examiner
provides a mapping of the claim elements of claim 1 to Long, see for
example, pages 15 and 16 of the answer where the Examiner finds:
Long teaches of
1) session data (e.g. the game data and information provided to
the game server during game play; para 83, 84, 86)
2) allowing a participant (e.g. a game player operating devices
110–190; “user devices,” of paras 84, 86)
3) to provide a participant input (e.g. game console/devices 110–
190 “operated” by players; para 130 “user devices,” of paras
84, 86)
4) for controlling a location (e.g. operation of game console;
para 83, locomotion detection; para 130; see also player C5’s
1435 “actions” of Figs. 14–20 in sequence, pars 143+; in
other words, the position of the “moving player avatar,” para
57; communicated para 84, 86 to render the game; para 94)
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5) of the participant object (e.g. moveable player avatar; para 57,
see depiction of player C5 in element 1435 of figs 14–20;
communicated para 84, 86 to render the game; para 94) and
6) a direction of the participant object (e.g. first person
perspective of the game player; field of view of the first
person perspective of player C5 1435; par 143 and Figs. 14–
20; communicated para 84, 86 to render the game; para 94).
Ans. 15, 16.
The Examiner similarly responds to each of Appellant’s contentions
[2] to [6] with similar claim mapping that addresses each of the contentions
on Answer 17, 18, 20–22, 24, 27, and 29. We agree with the Examiner’s
findings. We note that in the Reply Brief, Appellant does not provide a
rebuttal to the Examiner’s mapping.
As to Appellant’s contention [7] about motivation to combine, we are
unpersuaded by Appellant’s arguments because the Examiner has provided
specific motivations to combine Long and Mehta, and Appellant has not
persuasively rebutted those proffered motivations. Obviousness can be
established by combining the teachings of the prior art to produce the
claimed invention where there is some teaching, suggestion, or motivation to
do so. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (discussing rationale
underlying the motivation-suggestion-teaching test as a guard against using
hindsight in an obviousness analysis). “The rationale to modify or combine
the prior art does not have to be expressly stated in the prior art; the rationale
may be . . . reasoned from knowledge generally available to one of ordinary
skill in the art.” MPEP § 2144(I) (citations omitted). Here, the Examiner
finds that:
[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was filed to apply the teachings
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of Meh[ta] to Long. Doing so would have enabled the briefly
disclosed 3D audio of Long to be implemented using a system
that allows full spatial information of an adaptive audio system
to be reproduced in various different listening environments
that may include only a portion of the full speaker array
intended for playback.
Final Act. 10.
These rationales are “reasoned from knowledge generally available to
one of ordinary skill in the art,” and are therefore sufficient. Appellant has
made no effort to explain any flaws in the Examiner’s technical reasoning.
Regarding dependent claims 2 and 6, while Appellant raises additional
arguments for patentability of the cited claims (App. Br. 23–25), we find that
the Examiner has responded in the Answer with sufficient evidence. Ans.
26–29. Therefore, we adopt the Examiner’s findings and underlying
reasoning, which are incorporated herein by reference.
Based on this record, Appellant does not persuade us of error in the
Examiner’s rejection of claims 1–10, 12–20.
CONCLUSION
The Examiner did not err in rejecting claims 1–10, and 12–20 under
35 U.S.C. § 103(a) over the combined teachings and suggestions of the cited
references.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 12–20 103(a) Long, Mehta 1–10, 12–20

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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)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED