Ex Parte Aliaga et al

Patent Trial and Appeal Board

May 13, 2014

10449929 (P.T.A.B. May. 13, 2014)

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.
10/449,929 05/30/2003 Daniel G. Aliaga 3-14 1366
46304 7590 05/13/2014
RYAN, MASON & LEWIS, LLP
48 South Service Road
Suite 100
Melville, NY 11747
EXAMINER
LEE, Y YOUNG
ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
05/13/2014 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 DANIEL G. ALIAGA and INGRID BIRGITTA CARLBOM
1

__________

Appeal 2014-001767
Application 10/449,929
Technology Center 2600
____________

Before JEAN R. HOMERE, JASON V. MORGAN, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1, 3–12, and 14–23 under 35 U.S.C. § 102(b). This
appeal is related to Appeal No. 2009-014346 (rejection affirmed-in-part;
Dec. 29, 2011). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION.

1
Lucent Technologies Inc. is the Real Party in Interest. App. Br. 1.
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Application 10/449,929

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Invention
Appellants invented techniques for computing error-bounded position
and orientation (pose) of a panoramic camera in real-world environments.
Abst.
Exemplary Claim
Claim 1, reproduced below with key limitations emphasized, is
illustrative:
1. A method of estimating pose for a panoramic camera in an
environment, comprising the steps of:
determining placement of fiducials in the environment,
wherein fiducial placement is determined in accordance with
an automated planning algorithm;
determining an error-bounded pose of the camera based
on projections of the fiducials in images of the environment
captured by the camera; and
refining the fiducial placements so as to obtain fiducial
placements that provide bounded error pose estimates.
Rejection
The Examiner rejects claims 1, 3–12, and 14–23 under 35 U.S.C.
§102(b) as being anticipated by Jain (US 5,729,471). Ans. 4–7.

ISSUE
Did the Examiner err in finding that Jain discloses both “determining
placement of fiducials in the environment, wherein fiducial placement is
determined in accordance with an automated planning algorithm” and
“refining the fiducial placements so as to obtain fiducial placements that
provide bounded error pose estimates,” as recited in claim 1?
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ANALYSIS
Appellants note the claim 1 recitation “refining the fiducial
placements so as to obtain fiducial placements that provide bounded error
pose estimates” is similar to the claim recitation, previously found in
dependent claim 2, of “optimizing the fiducial placements so as to obtain
optimal fiducial placements that provide bounded error pose estimates.”
App. Br. 5–6. Appellants argue the Examiner’s findings do not show that
“Jain discloses refining the fiducial placements so as to obtain fiducial
placements that provide bounded error pose estimates as recited in claim 1.”
Id. at 6.
The Examiner responds that Appellants’ Specification “does not
provide an express definition of ‘refining to obtain . . . fiducial placements.’”
Ans. 4. The Examiner finds the Specification instead “refers to improving
the previous estimates” of where the fiducials are relative to the camera. Id.
However, the Examiner’s interpretation of the disputed “refining” claim
recitation is unreasonably broad.
Claim 1 recites “refining the fiducial placements” (emphasis added),
where antecedent for the fiducial placements comes from the recitations
“determining placement of fiducials in the environment, wherein fiducial
placement is determined in accordance with an automated planning
algorithm” (emphasis added). The environment referred to is the physical
environment in which the panoramic camera itself is a part, as evidenced by
the preamble recitation of “a panoramic camera in an environment”
(emphasis added). In other words, the initial determining step relates to the
process of specifying where to place fiducials in an environment shared by
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Application 10/449,929

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the camera while the refining step relates to the process of modifying the
specification of where to place the fiducials in the environment.
The Examiner’s findings regarding Jain are based on disclosures that
merely relate to refining an estimate of where fiducials are located (i.e.,
updating object hypotheses). Ans. 4–5 (citing Jain, col. 32, l. 53–col. 33, l.
28). The Examiner’s findings do not show that Jain’s object hypotheses
update process changes the specification of where to place fiducials in the
environment. Therefore, we agree with Appellants the Examiner erred in
finding Jain discloses both “determining placement of fiducials in the
environment, wherein fiducial placement is determined in accordance with
an automated planning algorithm” and “refining the fiducial placements so
as to obtain fiducial placements that provide bounded error pose estimates,”
as recited in claim 1.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and of claims 3–12 and 14–23, which contain similar recitations.
NEW GROUND OF REJECTION
We enter the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b). We reject claims 23 under 35 U.S.C.
§ 101.
Independent claim 23 recites “[a]n article of manufacture . . .
comprising a machine readable medium containing one or more programs
which when executed implement the steps of . . .” (emphases added). The
Specification does not clearly define either an “article of manufacture” or a
“machine readable medium.” Because the claim is directed to an article of
manufacture comprising a machine readable medium, the broadest
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reasonable interpretation of the claimed “article of manufacture” includes a
machine readable medium. The broadest reasonable interpretation of
“machine readable medium” claims typically cover forms of transitory
propagating signals per se. See Ex parte Mewherter, 107 USPQ2d 1857,
1862 (PTAB 2013) (precedential-in-part). Such signals are non-statutory
subject matter. See In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) (“A
transitory, propagating signal . . . is not a ‘process, machine, manufacture, or
composition of matter.’ . . . [T]hus, such a signal cannot be patentable
subject matter.”) Therefore, claim 23 encompasses non-statutory subject
matter.

DECISION
The decision of the Examiner to reject claims 1, 3-12, and 14-23 is
reversed.
We enter a NEW GROUND OF REJECTION of claim 23 under 35
U.S.C. § 101.
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of proceedings (37 C.F.R. § 1.197 (b)) as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
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examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under 37 C.F.R. § 41.52 by the Board upon the same
record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).

REVERSED
37 C.F.R. 41.50(b)

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