Ex Parte Fourney

Patent Trial and Appeal Board

Dec 15, 2015

12509207 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/509,207 0712412009
9748 7590
LAITRAM, L.L. C.
LEGAL DEPARTMENT
200 LAITRAM LANE
HARAHAN, LA 70123
12/17/2015
FIRST NAMED INVENTOR
Matthew L. Fourney
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2365.0 9511
EXAMINER
LOGAN, KYLE 0
ART UNIT PAPER NUMBER
3651
NOTIFICATION DATE DELIVERY MODE
12/17/2015 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):
jcronvic@laitram.com
cbishop@laitram.com
dgwalker@laitram.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW L. FOURNEY 1
Appeal2014-000092
Application 12/509,207
Technology Center 3600
Before JAMES P. CALVE, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew L. Foumey ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-15 under 35 U.S.C.
§ 103(a). 2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.
1 According to Appellant, the Real Party in Interest is Laitram, L.L.C.
Appeal Br. 3.
2 Appellant states that claims 1-18 are pending and claims 16-18 have been
indicated as allowable. Id. However, claims 16-18, added by Amendment
on June 28, 2012, have not been rejected on the record by the Examiner. See
Final Act. 1 (indicating claims 1-15 as pending), 3 (rejecting claims 1-15);
Ans. 3. Because claims 16-18 have not been rejected, they are not before us
on appeal and, as such, are not addressed in this Decision.
Appeal2014-000092
Application 12/509,207
CLAIMED SUBJECT MATTER
The invention concerns an "[a ]pparatus and method for sorting a mass
flow of articles without collisions between the articles." Spec., Abstract.
Claim 11 is illustrative of the subject matter on appeal, and recites:
11. A sorting system comprising:
a sorting conveyor including:
a plurality of selectively rotatable rollers arranged in a grid
of multiple rows and columns of individually controlled
grid cells along the sorting conveyor;
a control system determining the size and position of each
article as it enters the sorting conveyor, computing a
trajectory for each article along the sorting conveyor from
the article's entry to its exit from the sorting conveyor as a
function of the article's size and position, and selectively
controlling the rollers in each grid cell according to the
trajectories computed for the articles to actuate the rollers
to divert articles across the sorting conveyor along the
trajectories.
Appeal Br. 15, Claims App. (emphasis added). Independent claims 1 and 9
contain language similar to that emphasized in claim 11. Id. at 13-15.
REJECTIONS
The claims stand rejected as follows:
I. Claims 1-7 and 9-14 under 35 U.S.C. § 103(a) as unpatentable
over Foumey3 and Schiesser. 4 Final Act. 2-7; see also Ans. 3.
II. Claims 8 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Foumey, Schiesser, and Dowe. 5 Final Act. 8; see also Ans. 3. 6
3 US 2007/0221472 Al, pub. Sept. 27, 2007.
4 US 2004/0104100 Al, pub. June 3, 2004.
5 US 2010/0065401 Al, pub. Mar. 18, 2010.
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Application 12/509,207
OPfNION
35 USC§ 103(a) over Fourney and Schiesser
Claims 1, 9, and 11
Appellant argues independent claims 1, 9, and 11 as a group. Appeal
Br. 6-7. Therefore, we treat claim 11 as representative, and claims 1 and 9
stand or fall with claim 11. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 11, the Examiner finds that Foumey discloses a
sorting system comprising sorting conveyor 100 with selectively rotatable
rollers 106. Final Act. 6 (citing Foumey, Fig. 1). The Examiner finds that
Foumey discloses a control system, described in paragraph 41, for
"computing a trajectory for each article" and for "selectively controlling the
rollers ... according to the trajectories computed." Id. The Examiner states
that, consistent with its broadest reasonable interpretation, "'trajectory' is
construed as a path, progression, or line of development that a body
describes in space." Ans. 6 (citing Merriam-Webster Online Dictionary).
6 Appellant states that "the Examiner first rejected the claims based on
finding certain claim elements in the references (Final Office Action,
paragraphs 5-26), then apparently withdrew those rejections because of
[Appellant's] persuasive arguments made in a previous response (Final
Office Action, paragraph 27), and finally submitted a new ground of
rejection (Final Office Action, paragraph 28)." Appeal Br. 5. This is an
incorrect summary of the Final Office Action. As noted above, the Final
Office Action rejects claims 1-15 under 35 U.S.C. § 103(a) as unpatentable
over Foumey and Schiesser, together or in further combination with Dowe,
as detailed in paragraphs 5-26. The Examiner's statement at paragraphs 27
and 28 of the Final Office Action explains that the rejections presented in
paragraphs 5-26 differ from those presented in the prior Non-Final Office
Action. See also Ans. 3--4 (noting that Appellant's amendments necessitated
the new grounds of rejection presented in the Final Office Action).
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Application 12/509,207
The Examiner finds, therefore, that Foumey's control system "comput[es] a
trajectory" and "selectively control[ s] the rollers" by using "captured data on
the position and identity of an individual article to obtain the desired
ordering and alignment of the article ... [by] individually control[ling] a
plurality of drive rollers .... [T]he 'drive roller' instructions are equivalent
to the [claimed] computed article trajectories." Ans. 6-7 (citing Foumey i-f
41).
The Examiner also finds that, although Foumey's control system does
not "comput[ e] a trajectory ... as a function of the article's size," Schiesser
teaches a sorting system based on detected size and position. Final Act. 6-7
(citation omitted). Therefore, the Examiner concludes that "a skilled artisan
would have known that it was conceivable to reconfigure the controller of
Fourney such that objects travel a defined path along the conveyor as a
function of the position, orientation, size, and identity of the object," and
that it would have been obvious to modify Foumey's system "with the size-
based sorting feature of Schiesser in order to further automate the sorting
operation." Id. at 6-7.
Appellant contends that F oumey fails to disclose "computing a
trajectory for each article ... and controlling control elements according to
the computed trajectory." Appeal Br. 7. Rather, Appellant argues that
Foumey's paragraph 41 "says only that the positions of articles on a
conveyor belt can be controlled with great precision by individually
controlling the drive rollers of different zones," which does not "amount to
disclosing or suggesting a means for computing a trajectory and means for
selectively controlling the control elements in each grid cell according to the
trajectories." Id.
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Application 12/509,207
We are unpersuaded by Appellant's argument. F oumey discloses a
control system, "such as an imaging-based system," that identifies individual
objects and "precisely move[s them] along and/or across the [conveyor]
belt" by "individually controlling the drive rollers of the different zones" of
the belt, to "enable desired ordering and/or alignment of the objects on
further conveyor belts on which the objects are to be placed." Foumey i-f 41;
Final Act. 6. We agree with the Examiner that this disclosure satisfies the
limitations of claim 11 that require "computing a trajectory" and "selectively
controlling the rollers."
Indeed, we agree with the Examiner's interpretation of "trajectory" as
"a path, progression, or line of development that a body describes in space."
Ans. 6. This interpretation is consistent with the ordinary meaning of the
term and with Appellant's usage of the term in the Specification. See, e.g.,
Spec. 2 (disclosing that "articles are diverted across the conveyor belt along
the trajectories"), 8 (disclosing that "computed trajectories are used to
selectively actuate the belt rollers ... to cause the packages to follow their
computed trajectories on the sorting conveyor"), Fig. 1 lA (showing
trajectories 11 and12). As such, we agree that Foumey's disclosure of
"precisely mov[ing objects] along and/or across the belt" by "individually
controlling the drive rollers of the different zones" discloses adequately the
claim limitations.
Appellant also argues that Foumey's disclosure of ordering and
aligning articles does not require "computation of a trajectory," because
these functions could be accomplished by adjusting the speed of the rollers,
or by braking the rollers, "without altering the paths the articles follow."
Reply Br. 2. We are unpersuaded by this argument because Foumey
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Application 12/509,207
discloses "altering the paths the articles follow," at least by controlling the
rollers so as to "precisely mov[e objects] along and/or across the belt."
Foumey i141. 7
Appellant also contends that, although Foumey's drive rollers "affect
the travel path," this "does not mean that the drive rollers are controlled
based on a pre-computed trajectory for each article." Reply Br. 2-3. For
example, Appellant argues that Foumey could "control the drive rollers like
a 'traffic cop' directing traffic in real time to prevent collisions without
computing a trajectory." Id. at 3. We are not persuaded by this argument,
which is not commensurate with the scope of the claims. Appellant's claim
11 does not require that a trajectory be "pre-computed" or otherwise saved
in some manner prior to control of the rollers. Rather, the claim requires
only "computing a trajectory" and "selectively controlling the rollers ...
according to the trajectories computed." Appellant does not explain
persuasively why Foumey's disclosure, or Appellant's articulated "traffic
cop" example, does not satisfy the claim limitations.
Appellant also argues that the Examiner fails to present a rational
underpinning to support the rejection over Foumey and Schiesser. Appeal
Br. 8-10. We are unpersuaded by this argument, however, because
Appellant does not identify specifically any defect in the Examiner's
findings of fact or conclusions of law. See Final Act. 6-7. Rather,
7 Furthermore, Appellant has not explained persuasively why adjusting the
speed with which an article travels cannot be considered to "alter[] the path[]
the article[] follow[ s ]."
6
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Appellant presents a conclusory assertion that does not address specifically
the basis of the Examiner's rejection.
Appellant has not apprised us of error in the Examiner's rejection of
claim 11. Therefore, we affirm the rejection of claim 11 under 35 U.S.C.
§ 103(a) as unpatentable over Foumey and Schiesser. Claims 1 and 9 fall
with claim 11.
Claims 2, 5-7, 10, and 12-14
Appellant does not provide separate argument regarding dependent
claims 2, 5-7, 10, or 12-14. Therefore, we affirm the rejection of claims 2,
5-7, 10, and 12-14 under 35 U.S.C. § 103(a) as unpatentable over Foumey
and Schiesser. See Ex parte Frye, 94 USPQ2d 1072 (BP AI 2010)
(precedential).
Claims 3 and 4
Claims 3 and 4 each depend from independent claim 1, and require
the computation of "non-interfering trajectories" (claim 3) and "trajectories
as a function of belt speed" (claim 4). Appeal Br. 14, Claims App. The
Examiner finds that "[Schiesser] discloses that the means for computing a
trajectory computes non-interfering trajectories for articles ... [and]
computes trajectories as a function of belt speed." Final Act. 4 (citing
Schiesser i-fi-154, 58, 69); Ans. 8-9 (citing Schiesser i-fi-138, 42, 58, 69, 70).
Appellant argues that the Examiner erred in finding that Schiesser
discloses non-interfering trajectories and trajectories based on belt speed
because Schiesser "makes no mention of computing trajectories" at all.
Appeal Br. 7-8, 10-11. Specifically, Appellant argues that Schiesser avoids
interference by increasing the separation between articles or by rotating
them, not by altering their trajectories (see id. at 7), and does not compute
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trajectories based on belt speed because Schiesser's articles travel in a
straight line. Id. at 11; see also Reply Br. 3--4.
We are unpersuaded by this argument. As Appellant acknowledges,
"[t]he manipulation bed 30 in [Schiesser] can selectively speed an article up
or rotate an article about a vertical axis." Appeal Br. 7; see also Schiesser
i-fi-153, 54 (disclosing article rotation and simultaneous, non-interfering exit
to avoid collisions), 5 8 (disclosing control of belt speed). Appellant has not
articulated persuasively how Schiesser's ability to rotate an article or to
control the speed with which it moves along a conveyor belt fails to satisfy
the requirements of claims 3 and 4. We agree with the Examiner that these
disclosures demonstrate that Schiesser "control[ s] the path and progression
of articles on the conveyor," e.g., computes a trajectory for articles on the
conveyor, as claimed. Ans. 8-9. Therefore, we are not persuaded that the
Examiner erred in finding that Schiesser teaches "non-interfering
trajectories" and "trajectories as a function of belt speed."
35 USC§ 103(a) over Fourney, Schiesser, and Dowe
Claims 8 and 15 require, inter alia, an outbound conveyor that
advances in the direction of belt travel at greater speed than the sorting
conveyor, and that abuts the sorting conveyor to receive articles diverted
from the sorting conveyor. Appeal Br. 14, 16, Claims App. The Examiner
finds that Dowe teaches outbound conveyor 2 having the features claimed.
Final Act. 8 (citing Dowe i-fi-1 32, 51 ). The Examiner concludes that it would
have been obvious to modify the combined system of Foumey and Schiesser
"with the variable speed conveyor of Dowe in order to reorient articles being
conveyed for subsequent processing downstream of the sorting system." Id.;
see also Ans. 9-10.
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Application 12/509,207
Appellant argues that Dowe' s belt 2 does not "abut the sorting
conveyor side by side," as claimed. Appeal Br. 11-12. Rather, Appellant
argues that the Dowe's belts (1, 2) are "mirror images" and, therefore, belt 1
is not a "sorting conveyor." Id. at 11. Appellant also argues that the frame
of Dowe's invention precludes placement next to a sorting conveyor. Id. at
11-12.
We are unpersuaded by Appellant's argument, which attacks the
references individually, where the Examiner's rejection depends on the
combination of Foumey, Schiesser, and Dowe. The Examiner relies on
Foumey, not Dowe, as disclosing a sorting conveyor. Final Act. 2 (claim 1),
6 (claim 11). 8 Therefore, whether Dowe' s belt can be considered a "sorting
conveyor" is not germane to the rejection. See also Ans. 10.
Additionally, the Examiner's combination does not rely on the bodily
incorporation of Dowe's frame structure into Foumey's sorting system, but
rather depends on incorporating only Dowe' s teaching of an outbound
conveyor travelling at high speed. Appellant does not dispute that Dowe
teaches as much. See, e.g., Dowe i-f 51 (disclosing two parallel belts that
operate at different speeds to re-orient articles). See In re Keller, 642 F .2d
413, 425 (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.")
8 Furthermore, Foumey explicitly discloses that articles may be moved along
the sorting conveyor to "further conveyor belts on which the objects are to
be placed," supporting the Examiner's combination with Dowe. Foumey
,-r 41.
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Application 12/509,207
(citations omitted); see also In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir.
1983) ("[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.")
(citations omitted). Appellant has not apprised us of error in the Examiner's
rejection of claims 8 and 15. Therefore, we affirm the rejection of claims 8
and 15 under 35 U.S.C. § 103(a) as unpatentable over Foumey, Schiesser,
and Dowe.
New Ground of Rejection under 35 US. C. § 112, Second Paragraph
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter a new
ground of rejection of claims 1-8 under 35 U.S.C. § 112, second paragraph,
as indefinite.
Claims 1-8 recite "means for computing a trajectory for each article
along the sorting conveyor from the article's entry to its exit from the
conveyor belt as a function of the size and position sensed by the means for
sensing" and "means for selectively controlling the control elements in each
grid cell according to the trajectories computed for the articles to divert
articles transversely across the sorting conveyor along the trajectories."
Appeal Br. 13-14, Claims App. (emphasis added).
Under 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a
means or step for performing a specified function without the
recital of structure, material, or acts in support thereof, and such
claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents
thereof.
A claim limitation that includes the term "means" is presumed to invoke
means-plus-function treatment under 35 U.S.C. § 112, sixth paragraph.
Rodime PLC v. Seagate Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999).
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Application 12/509,207
Therefore, we construe the recited "means for computing a trajectory ... "
and "means for selectively controlling the control elements ... "as means-
plus-function limitations subject to 35 U.S.C. § 112, sixth paragraph.
When means-plus-function language is employed in a claim, the
corresponding Specification must provide an adequate disclosure showing
what is meant by that language. If an adequate disclosure is not set forth, an
applicant has failed to particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112. In re
Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en bane). Moreover,
for a computer-implemented claim limitation interpreted under 35 U.S.C.
§ 112, sixth paragraph, this disclosure must include the algorithm associated
with the recited function, which transforms a general purpose computer into
a special purpose computer programmed to perform the disclosed function.
Aristocrat Techs. Australia Pty Ltd. v. Int'! Game Tech., 521F.3d1328,
1333 (Fed. Cir. 2008) (quoting Harris Corp. v. Ericsson Inc., 417 F.3d 1241,
1253 (Fed. Cir. 2005) ("'The corresponding structure for a§ 112 i-f 6 claim
for a computer-implemented function is the algorithm disclosed in the
specification."'); Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1367
(Fed. Cir. 2008) ("[A] means-plus-function claim element for which the only
disclosed structure is a general purpose computer is invalid if the
specification fails to disclose an algorithm for performing the claimed
function."). The required algorithm may be expressed in any understandable
terms, including in prose, in a flow chart, or "in any other manner that
provides sufficient structure." Finisar Corp. v. DirecTV Group, Inc., 523
F.3d 1323, 1340 (Fed. Cir. 2008). Accordingly, to satisfy the definiteness
requirements of 35 U.S.C. § 112, second paragraph, Appellant's
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Application 12/509,207
Specification must disclose adequate structure for performing the claimed
functions recited in claim 1.
Appellant's Specification fails this requirement. The description of
the functions of "computing a trajectory ... " and "selectively controlling the
control elements ... "is found in Appellant's Specification at pages 8-9.
There, the Specification discloses that a general purpose computer performs
these functions, but does not define the algorithms used. See Spec. 8 ("The
system controller includes a programmable computer, such as a work
station, a desktop computer, a programmable logic controller, or an
embedded micro controller."). Rather, Appellant's Specification generally
describes the functions to be performed, but does not disclose an algorithm
explaining how those functions are performed by the general purpose
computer (system controller). Id. at 8-9 (disclosing that the "system
controller uses the video images ... to produce a table of trajectories 120 for
each package that is 20 received on the sorting conveyor. The computed
trajectories are used to selectively actuate the belt rollers passing through
each grid cell to cause the packages to follow their computed trajectories on
the sorting conveyor"). Furthermore, although Appellant's Specification
refers to the flow chart provided at Figure 12, this chart identifies only the
generic functional language to be performed. See Spec. 9 (citing Fig. 12
(showing step 132 ("Compute trajectory for each package"), step 136 ("Use
trajectories to determine which grid cells to actuate and which to
deactuate"), and step 138 ("Send actuate/deactuate signals to the grid cell
actuators")). This description is insufficient because it does not describe
how the trajectory is computed based on the sensed size and position or how
the control elements are controlled in each grid cell. See Blackboard, Inc. v.
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Application 12/509,207
Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir. 2009) (noting that the
Specification's mere description of the claimed function without disclosing
how those functions are performed is not an adequate disclosure).
Because the Specification does not provide an algorithm for
performing the above-noted functions of claim 1, claim 1 and dependent
claims 2-8 are indefinite under 35 U.S.C. § 112, second paragraph.
DECISION
We AFFIRM the rejection of claims 1-7 and 9-14 under 35 U.S.C.
§ 103(a) as unpatentable over Foumey and Schiesser; and
We AFFIRM the rejection of claims 8 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Foumey, Schiesser, and Dowe.
We also enter a NEW GROUND OF REJECTION of claims 1-8
under 35 U.S.C. § 112, second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[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 Appellant, 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 the appeal 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 examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record ....
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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).
AFFIRMED; 37 C.F.R. § 41.50(b)
LLW
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