Piccionielli, Gregory A. et al.

Patent Trials and Appeals Board

Aug 28, 2020

2019003070 (P.T.A.B. Aug. 28, 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.
13/815,769 03/15/2013 Gregory A. Piccionielli 39003.820US02 5316
7590 08/28/2020
Gregory A. Piccionelli
30801 Calaise Court
Westlake Village, CA 91362
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
MAIL DATE DELIVERY MODE
08/28/2020 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. PICCIONIELLI1 and MICHAEL M. GERARDI

Appeal 2019-003070
Application 13/815,769
Technology Center 2600
____________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject Claims 1–17, which are all of the claims
pending in the present application. Appeal Br. 5; see also Claims App. 15–
17. Because the claims on appeal have been twice rejected, we have
jurisdiction pursuant to 35 U.S.C. §§ 6 and 134. Ex parte Lemoine, 46
USPQ2d 1420, 1423 (BPAI 1994) (precedential).

1 The Application Data Sheet (“ADS”) and Appeal Brief spell this
inventor’s name differently. Compare ADS 1, 4 (“Gregory A. Piccionielli”),
with Appeal Br. 1, 3 (“Gregory A. Piccionelli”). For purposes of this
Decision, we use the spelling provided in the ADS.
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “the
inventor Gregory A. Piccionelli and Michael M. Gerardi.” Appeal Br. 3.
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We AFFIRM.3
STATEMENT OF THE CASE
Claimed Subject Matter
The claims relate to “providing a virtual image to a human viewer
when the human viewer views and object, such as a billboard or a wall of a
building, on which a blank surface is defined.” Spec. 2:16–18.
Claims
Claim 1, the lone independent claim, is illustrative and reproduced
below with some formatting added:
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 visual
display device worn by a human viewer to the surface, and
c) providing an image to the human viewer via the visual
display device when the location and viewing angle with respect
to the surface is determined to be within the range of distances
and viewing angles selected in step a), such that the image
provided on the visual display device is perceived by the human
viewer to be within an area defined on the surface but-the image
is only on the visual display device.

3 Rather than reiterate the arguments of Appellant and the Examiner, we
refer to the Appeal Brief (“Appeal Br.”) and Claims Appendix (Claims
App.), filed March 14, 2018; the Examiner’s Answer (“Ans.”), mailed
January 8, 2019; the Non-Final Office Action (“Non-Final”), mailed March
8, 2017; and the substitute Specification (“Spec.”), filed September 17, 2013
and as amended April 1, 2015, for their respective details.

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References and Rejections on Appeal
Claims 1, 7, and 8 stand rejected under pre-AIA 35 U.S.C. § 102(b) as
being anticipated by Triebfuerst (US 2004/0046711 A1; published March
11, 2004). Non-Final 2–3.
Claims 2–5 stand rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Triebfuerst and Iggulden et al. (US 5,957,697; issued
September 28, 1999) (“Iggulden”). Id. at 3–4.
Claim 6 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Triebfuerst and Benton (US 6,917,370 B2; issued July 12,
2005). Id. at 4.
Claims 9–17 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Triebfuerst and Dempski (US 7,050,078 B2; issued
May 23, 2006). Id. at 4–5.
ANALYSIS
We have reviewed the rejections of Claims 1–17 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments, which Appellant could have made but chose not to make in
the Briefs, are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We
adopt as our own the findings and reasons set forth in the Examiner’s
Answer and in the rejection on Appeal for these claims, to the extent
consistent with our analysis below. We provide the following explanation to
highlight and address specific arguments and findings primarily for
emphasis. We consider Appellant’s arguments seriatim, as they are
presented in the Appeal Brief, pages 9–14.
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Application 13/815,769

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CLAIMS 1, AND 6–8:
ANTICIPATION OR OBVIOUSNESS BASED AT LEAST ON TRIEBFUERST
Appellant presents arguments for the § 102(b) rejection of Claim 1
and relies on those same arguments as a basis for disputing the § 102(b)
rejections of Claims 7 and 8, as well as the § 103(a) rejection of Claim 6.
Appeal Br. 9–11, 14. Therefore, we analyze these claims on the basis of
representative Claim 1. See 37 C.F.R. § 41.37(c)(1)(iv); In re Marco
Guldenaar Holding B.V., 911 F.3d 1157, 1162 (Fed. Cir. 2018).
Claim 1 recites, among other limitations, “defining a range of
distances from a surface and a range of viewing angles with respect to the
surface.” The Examiner finds Triebfuerst discloses this limitation because it
displays augmented information in a technician’s field of vision around a
component of an observed object, and cancels that information if the
technician moves his head away from the object. Non-Final 2 (citing
Triebfuerst Figs. 1–2, ¶¶ 33–34); see also Ans. 7.
Appellant contends that Triebfuerst does not disclose the quoted
limitation. Appeal Br. 9–11; Reply Br. 4. In support of this contention,
Appellant makes the following assertions. First, there is no mention of
range of distances, distance, or viewing angles in the cited disclosures of
Triebfuerst. Appeal Br. 9–10. Second,
[t]he Triebfuerst publication is not defining a range of distances
and viewing angles with respect [to] the surface. At most, a
single range from when the mark is visible to the camera to the
surface of the item is defined. No other distances are
DEFINED. Similarly, at most a single viewing angle is defined
in the Triebfuerst publication. That is the angle that the mark is
viewable to the camera from one side to the other side. No other
viewing angles are DEFINED.
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Id. at 10. The Examiner responds, in relevant part, by citing an earlier Board
decision in related Application 11/368,348 (“the ’348 application)4 that
addressed the same issue as evidence that Appellant’s arguments are not
persuasive. Ans. 7–8 (citing Ex parte Gregory A. Piccionelli & Michael M.
Gerardi, Appeal 2017-009794, 2018 WL 1315529, at *3–4 (PTAB Mar. 12,
2018)).
“The doctrine of law of the case generally bars retrial of issues that
were previously resolved.” Intergraph Corp. v. Intel Corp., 253 F.3d 695,
697 (Fed. Cir. 2001). “[A] Board decision in an application is the ‘law of
the case,’ and is thus controlling in that application and any subsequent,
related application.” MPEP § 706.07(h)(XI)(A); see also PTAB Standard
Operating Procedure 2, Rev. 10, § I.B (“A routine decision is binding in the
case in which it is made, even if it is not designated as precedential or
informative . . . .”).
[R]easons that may warrant departure from the law of the case
. . . , include the discovery of new and different material
evidence that was not presented in the prior action, . . . an
intervening change of controlling legal authority, or when the
prior decision is clearly incorrect and its preservation would
work a manifest injustice.
Intergraph, 253 F.3d at 698.
The earlier Board decision cited by the Examiner adjudicated a
substantially similar method claim filed by the same inventors and,
moreover, resolved the same issue about the same claim limitation.
Piccionelli, 2018 WL 1315529, at *2–4. In particular, the Board affirmed

4 The present application is a continuation-in-part of the ’348 application.
See, e.g., Spec. 2:2–3).
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the Examiner’s decision to reject Claim 1 of the ’348 application as being
anticipated by Triebfuerst—the same prior art as here—and specifically
explained why the Examiner did not err in finding that Triebfuerst disclosed
“defining a range of distances from a surface and a range of viewing angles
with respect to the surface”—the same claim limitation as the one at issue
here. Id. And, Appellant does not present—nor do we find—new and
different material evidence in the present appeal, an intervening change of
controlling legal authority since the earlier decision, or a clear error in the
earlier decision that would work a manifest injustice.
We therefore determine that the “law of the case” doctrine applies and
that the Board’s earlier decision is binding and has a preclusive effect on the
issue raised here by Appellant. Thus, we do not disturb the Board’s prior
affirmance of the Examiner’s finding that Triebfuerst discloses “defining a
range of distances from a surface and a range of viewing angles with respect
to the surface.”
For the foregoing reasons, we sustain the Examiner’s § 102(b)
rejection of Claims 1, 7, and 8, as well as the Examiner’s § 103 rejection of
Claim 6.
CLAIMS 2–5:
OBVIOUSNESS BASED ON TRIEBFUERST AND IGGULDEN
Claims 2–5 recite that “the surface” may be “a hand-held item” (claim
2), such as “a book” (Claim 3), and that “at least a portion of the surface is
blank” (Claim 4) or “a single color surface” (Claim 5). The Examiner finds
Iggulden teaches these limitations with its disclosure of a book 100, as
shown in Figure 3. Non-Final 3 (citing Iggulden, Fig. 3, 3:58–4:45).
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Appellant contends that Iggulden does not teach or suggest these
limitations. Appeal Br. 13. According to Appellant, “Figure 3 of the
Iggulden et al. patent shows a traditional book with no blank or colored area
for display of a virtual image. Furthermore, what is described at col. 3, line
58 to col. 4, line 45 is using symbols or type font/color, not an area as
described in the specification.” Id.
These arguments are not persuasive. Rather, we agree with the
Examiner that Figure 3 of Iggulden satisfies the disputed limitations because
it shows a handheld item such as a book (book 100) with portions that are
blank (on any given page, the areas between lines of text or photos and in
the margins) and have a single color—white. Iggulden, Fig. 3. As the
Examiner explains, “‘a portion of the surface’ is very broad in scope and
under the broadest reasonable interpretation can be taken to mean any
portion of the surface,” and “it is clearly seen in Figure 3 that there are
portions of the page that are blank.” Ans. 10.
We therefore sustain the Examiner’s § 103 rejections of Claims 2–5.
CLAIMS 9–17:
OBVIOUSNESS BASED ON TRIEBFUERST AND DEMPSKI
Appellant presents arguments for the § 103(a) rejection of Claim 9
and relies on those same arguments as a basis for disputing the § 103(a)
rejections of Claims 10–17. Therefore, we analyze these claims on the basis
of representative Claim 9. See 37 C.F.R. § 41.37(c)(1)(iv); Marco
Guldenaar, 911 F.3d at 1162.
Claim 9 recites “[t]he method of claim 1 wherein in step c) the virtual
image is provided to the human viewer via wireless transmission means.”
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The Examiner finds Dempski teaches this limitation because in Dempski
“there is two way communication between the terminal [114] and the viewer
display [104][,] and the virtual image [112] is provided to the user through a
wireless transmission.” Ans. 10; see also id. at 8–10; Non-Final 4 (citing
Dempski, Fig. 1, 6:43–65).
Appellant contends that Dempski does not teach or suggest the quoted
limitation. Appeal Br. 11–13. In support of this contention, Appellant
makes the following assertions. First,
what is being taught by Dempski is an operator at a remote
location views the image on a computer screen and that remote
operator using the operator input device selects the received
video image and a virtual image 112 is registered to the object
108. What is sent to the human view is not the virtual image as
asserted in the Non-Final Office Action. Rather, it is mirror of
the display 110 that is simultaneously displayed and not the
virtual image.
Id. at 12; see also id. at 11–12 (quoting Dempski 6:43–65). Second, even
though Dempski discloses communication between terminal 114 and
computer 106 through a wireless network, “[a] wireless network still has
switches and wires,” and the cited disclosures of Dempski do not teach
wireless bidirectional communication between the computer 106 and
terminal 114. Id. at 12.
These arguments are not persuasive. Rather, we agree with the
Examiner that the cited disclosures of Dempski at least suggest the disputed
limitation. In particular, Dempski discloses that an operator of a terminal
114 may select an object 108 of a video image 110, and a virtual image 112
may be registered to the object 108 and displayed both on the terminal and
the viewer display 104. Dempski 6:55–62. Dempski further discloses that
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the terminal 114 may communicate with the computer 106 through a
wireless network, that computer 106 may include a wireless transmitter and
antenna for wireless connectivity to a computer network, and that the
computer 106 is coupled to a video capturing device 102 and the viewer
display 104 through a wireless network. Id. at 6:18–20, 6:27–29, 6:44–46.
These disclosures at least suggest an augmented reality (AR) system in
which the terminal 114 wirelessly communicates the virtual image 112 to the
viewer display 104. Contrary to Appellant’s assertions, these disclosures
also at least suggest that Dempski’s AR system is readily capable of wireless
bidirectional communication between those devices. And, even if Appellant
were correct that Dempski’s wireless network “still has switches and
wires”—which Appellant presents no persuasive evidence to show—the
broadest reasonable interpretation of the claim language does not preclude
the inclusion of these additional elements.
We therefore sustain the Examiner’s § 103 rejections of claims 9–17.

CONCLUSION
We affirm the Examiner’s rejection of Claims 1, 7, and 8 under
pre-AIA 35 U.S.C. § 102(b).
We affirm the Examiner’s rejections of Claims 2–6 and 9–17 under
pre-AIA 35 U.S.C. § 103(a).
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).

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In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 7, 8 102(b) Triebfuerst 1, 7, 8
2–5 103(a) Triebfuerst,
Iggulden
2–5
6 103(a) Triebfuerst, Benton 6
9–17 103(a) Triebfuerst,
Dempski
9–17
Overall
Outcome
1–17

AFFIRMED