Dolby Laboratories Licensing Corporation

Patent Trials and Appeals Board

Nov 8, 2021

2020004757 (P.T.A.B. Nov. 8, 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.
15/945,237 04/04/2018 Ajit NINAN D17013US01 (60175-0423) 8010
142052 7590 11/08/2021
Wong & Rees LLP
Dolby Laboratories Inc.
1570 The Alameda
Suite 215
San Jose, CA 95126
EXAMINER
KIM, MATTHEW DAVID
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
11/08/2021 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@wongrees.com
patents@dolby.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJIT NINAN and NEIL MAMMEN
Appeal 2020-004757
Application 15/945,237
Technology Center 2400
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
LARRY J. HUME, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–20, which are all claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Dolby Laboratories
Licensing Corp. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claimed subject matter is directed to “Augmented 3D
Entertainment Systems.” See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention relate to:
A wearable device comprises a left view optical stack for
a viewer to view left view cinema display images rendered on a
cinema display and a right view optical stack for the viewer to
view right view cinema display images rendered on the cinema
display. The left view cinema display images and the right view
cinema display images form stereoscopic cinema images. The
wearable device further comprises a left view imager that
renders left view device display images, to the viewer, on a
device display, and a right view imager that renders right view
device display images, to the viewer, on the device display. The
left view device display images and the right view device
display images form stereoscopic device images
complementary to the stereoscopic cinema images.
Spec. 52 (Abstr.).
Figures 2B and 2C of Appellant’s Specification are replicated below
as an aid in understanding the claimed invention.

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Apr. 14, 2020); Reply Brief (“Reply Br.,” filed June 8, 2020); Examiner’s
Answer (“Ans.,” mailed May 8, 2020); Final Office Action (“Final Act.,”
mailed Oct. 28, 2019); and the Substitute Specification (“Spec.,” filed
June 4, 2018) (claiming benefit of US 62/484,157, filed Apr. 11, 2017).
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“FIG. 2B illustrates an example configuration of a wearable device as
related to one of a viewer's eyes.” Spec. ¶ 9.

“FIG. 2C illustrates an example portion of an augmented
entertainment system in relation to a viewer's both eyes.” Id.
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Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
Appeal (emphases added to contested prior-art limitations):
1. A wearable device, comprising:
a left view optical stack for a viewer of the wearable
device to view left view cinema display images rendered on a
cinema display;
a right view optical stack for the viewer to view right
view cinema display images rendered on the cinema display;
wherein the left view cinema display images as viewed
by the viewer through the left view optical stack and the right
view cinema display images as viewed by the viewer through
the right view optical stack form stereoscopic cinema images;
a left view imager that renders left view device display
images, to the viewer, on a device display of the wearable
device;
a right view imager that renders right view device display
images, to the viewer, on the device display of the wearable
device;
wherein the left view device display images as viewed by
the viewer through the left view imager and the right view
device display images as viewed by the viewer through the right
view imager form stereoscopic device images complementary to
the stereoscopic cinema images;
wherein the stereoscopic cinema images are derived from
multi-view images from which the device display images are
derived.
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REFERENCES
The Examiner relies upon the following prior art as evidence:
Name Reference Date
Marcus et al. (“Marcus”) US 2009/0231697 A1 Sept. 17, 2009
Blumenthal et al. (“Blumenthal”) US 2012/0105439 A1 May 3, 2012
Yang et al. (“Yang”) US 2015/0061998 A1 Mar. 5, 2015
Hu US 2018/0164599 A1 June 14, 2018
REJECTIONS
R1. Claims 1–4, 7–15, and 18–20 stand rejected under AIA 35
U.S.C. § 103 as being unpatentable over the combination of Hu, Marcus, and
Blumenthal. Final Act. 3.
R2. Claims 5, 6, 16, and 17 stand rejected under AIA 35 U.S.C.
§ 103 as being unpatentable over the combination of Hu, Marcus,
Blumenthal, and Yang. Final Act. 12.
ISSUES AND ANALYSIS
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect
to claims 1–20 for the specific reasons discussed below. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. § 103 Rejection R1 of Claims 1–4, 7–15, and 18–20
Issue 1
Appellant argues (Appeal Br. 6–17; Reply Br. 1–10) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
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combination of Hu, Marcus, and Blumenthal is in error. These contentions
present us with the following issues:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] wearable device” wherein, inter alia, “left view device
display images as viewed by the viewer through the left view imager and [ ]
right view device display images as viewed by the viewer through the right
view imager form stereoscopic device images complementary to the
stereoscopic cinema images,” and “wherein the stereoscopic cinema images
are derived from multi-view images from which the device display images
are derived,” as recited in claim 1? In addition, we are presented with the
issue of whether the Examiner erred by not providing proper motivation to
combine the references in the manner suggested by the Examiner.
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference . . . . Rather,
the test is what the combined teachings of [those] references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, 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 . . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“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, 550 U.S. at 418).
Analysis
The Examiner relies upon Hu’s disclosure in paragraph 9 as teaching
“see through glasses that allow for 3D multimedia to be complementary to
the viewed real space and paragraph 20 regarding using polarization to
separate projected image and present as 3D multimedia,” and relies upon
Marcus in Figure 11 and paragraphs 82 and 83 as teaching viewing
stereoscopic cinema displays, as required by claim 1. Final Act. 3–4. The
Examiner further relies upon Blumenthal as teaching the limitation “wherein
the stereoscopic cinema images are derived from multi-view images from
which the device display images are derived.” Final Act. 5 (emphasis
omitted).
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Appellant explains the invention as follows:
Claim 1 does not generally claim the concept of
“stereoscopic cinema images.” Claim 1 is directed to specific
inventive features including “stereoscopic cinema images” as
viewed by a viewer through left and right view optical stacks
and “stereoscopic device images” as viewed by the viewer
through left and right view imagers with the integral features
that the “stereoscopic device images” is complementary to the
“stereoscopic cinema images” and that “the stereoscopic
cinema images are derived from multi-view images from which
the device display images are derived.”
Neither Hu nor Marcus nor Blumenthal discloses
“stereoscopic cinema images” with these integral features of
Claim 1.
Appeal Br. 12.
Appellant further argues, “‘stereoscopic images on screen’ allegedly
disclosed in Marcus could not possibly be images which images from
microdisplays in Hu are complementary to and which are derived from
multi-view images from which the images from the microdisplays in Hu are
derived, even if the images from the microdisplays in Hu were the
“stereoscopic device images” in Claim 1.” Id. “There is no factual support
in the cited art for any existence of a relationship between the ‘stereoscopic
images on screen’ allegedly disclosed in Marcus and the images from the
microdisplays in Hu, given that Marcus and Hu are two different
references.” Appeal Br. 13.3

3 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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We are persuaded by Appellant’s arguments because we are unable to
discern any teaching or suggestion that the device display images taught by
Hu would be, in any way, related to (“complementary to”), the stereoscopic
images on a screen as taught by Marcus.
Motivation to Combine
With respect to the stated basis for the motivation to combine Hu,
Marcus, and Blumenthal, Appellant argues, “[c]ontrary to the Answer’s
newly raised arguments,” Reply Br. 8:
A person skilled in the art reading these references would
have readily and reasonably understood that Hu’s corrector with
a complementary, reciprocal or conjugate form to the form of
the prism would have already provided the see-through
functionality. Such a person would not have been reasonably
motivated to incorporate the left- and right-image separation
techniques of Marcus into Hu to provide the see-through
functionality already provided in Hu. Such a person would not
have reasonably expected to use Hu’s see through glasses to
view stereoscopic cinema images.
Id.
Therefore, without improper hindsight gleaned from
reading the claim language of Claim 1, a person skilled in the
art would not have found it reasonable or obvious to “combine
properties of Marcus for external screen images into the optical
stack of Hu . . . making simultaneous AR display and
stereoscopic 3D display,” contrary to the Answer’s argument.
Reply Br. 9.
We agree with Appellant, and are unpersuaded by the Examiner’s
findings related to the combinability of the Hu and Marcus references to
collectively teach or suggest the claimed invention, i.e.:
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Therefore, it would have been obvious to a person of
ordinary skill in the art before the effective filing date of the
application to modify the teaching of Hu to include the teaching
of Marcus by incorporating the teachings regarding
stereoscopic cinema images in a case where a user uses both
the display of the glasses and a cinema display. One of ordinary
skill would recognize that since Hu’s glasses are see through
and comprise an optical stack, the see through portions of the
optics of Hu can be modified with the necessary adjustments to
accommodate seeing a cinema display of Marcus while the
display of Hu is active, and in doing so, display of Hu would be
complementary to cinema images of Marcus.
One would be motivated to combine these teachings in
order to provide a display apparatus using an arrangement of
bilinear and trilinear electromechanical grating devices (see
Marcus paragraph 1).
Ans. 5 (emphasis added).
We find the Examiner erred in formulating the motivation to combine
because “[t]he mere fact that references can be combined or modified does
not render the resultant combination obvious unless the results would have
been predictable to one of ordinary skill in the art.” Manual of Patent
Examining Procedure (MPEP) § 2143.01(III) (citing KSR 550 U.S. at 417
(“If a person of ordinary skill can implement a predictable variation, § 103
likely bars its patentability.)).
There is no evidence of record that the combination of elements
specifically recited in claim 1, using both stereoscopic cinema images and
device display images complementary to the stereoscopic images on a
screen, represents a predictable variation. We further disagree with the
Examiner’s finding that “[o]ne would be motivated to combine these
teachings in order to provide a display apparatus using an arrangement of
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bilinear and trilinear electromechanical grating devices,” as taught by
Marcus. We see no recitation in claim 1 of any “arrangement of bilinear and
trilinear electromechanical grating devices,” and therefore find no
motivation to combine Hu with Marcus.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art combination to teach or suggest the disputed limitations of claim 1, such
that we find error in the Examiner’s resulting legal conclusion of
obviousness. Therefore, we do not sustain the Examiner’s obviousness
rejection of independent claim 1, and independent claim 12, which recites
the disputed limitations in commensurate form. For the same reasons, we do
not sustain Rejection R1 of dependent claims 2–4, 7–11, 13–15, and 18–20
that variously depend from claims 1 and 12.4
2. § 103 Rejection R2 of Claims 5, 6, 16, and 17
In light of our reversal of the rejections of independent claims 1
and 12, supra, we also reverse obviousness Rejection R2 under § 103 of
claims 5, 6, 16, and 17, which variously and ultimately depend from
claims 1 and 12. On this record, the Examiner has not shown how the
additionally cited Yang reference overcomes the aforementioned

4 In the event of further prosecution, we leave it to the Examiner to
determine whether the recitation of “stereoscopic device images
complementary to the stereoscopic cinema images” meets the definiteness
requirements of 35 U.S.C. § 112(b). Although the Board is authorized to
reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02.
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deficiencies with Hu, Marcus, and Blumenthal, as discussed above regarding
claim 1.
CONCLUSIONS
We REVERSE the Examiner’s rejections. More specifically,
Appellant has persuasively argued that the Examiner erred with respect to
obviousness Rejections R1 and R2 of claims 1–20 under 35 U.S.C. § 103
over the cited prior art combinations of record, and we do not sustain the
rejections.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/
Basis Affirmed Reversed
1–4, 7–15,
18–20 103
Hu, Marcus,
Blumenthal
1–4, 7–15,
18–20
5, 6, 16, 17 103
Hu, Marcus,
Blumenthal,
Yang
5, 6, 16, 17
Overall
Outcome 1–20
REVERSED