Ex Parte O

Patent Trial and Appeal Board

Apr 27, 2018

14736208 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
141736,208
37833 7590
Richard C. Litman
FILING DATE
06/10/2015
05/01/2018
112 S. West Street
Alexandria, VA 22314
FIRST NAMED INVENTOR
WAYNE PATRICK O'BRIEN
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.
14695.03 6996
EXAMINER
SCHNIREL, ANDREW B
ART UNIT PAPER NUMBER
2625
NOTIFICATION DATE DELIVERY MODE
05/01/2018 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):
uspto@4patent.com
uspto@nathlaw.com
mbashah@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYNE PATRICK O'BRIEN
Appeal2018-004218
Application 14/736,208
Technology Center 2600
Before JEAN R. HOMERE, IRVINE. BRANCH,
and MICHAEL M. BARRY, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final
Rejection of claims 1 and 15, which constitute all claims pending in this
application. 1 Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm in part.
1 Appellant identifies the real party in interest as the inventor of record,
Wayne P. O'Brien. App. Br. 3.
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Application 14/736,208
Introduction
According to Appellant, the claimed subject matter relates to a holographic
user interface (100) for manipulating and controlling an external device such
as a robotic arm (110) in a remote location. Spec. i-f 1. In particular, the
holographic user interface (100) includes a holographic display unit (30) for
constructing and displaying a hologram (116), and a motion detector (35) for
detecting movement and location of a physical command object, such as a
user's finger or hand (17) relative to the displayed hologram. Id. i-f 12. The
motion detector (35) communicates with a controller CPU (10), which
converts into a command signal the detected location of the physical
command object (17) within the displayed hologram (116). Id. The
command signal is transmitted to the external device (110), which
subsequently emulates the detected movement of the physical object. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
Claim 1. A holographic user interface system adapted for direct
manipulation of an external device, the system consisting of:
the external device;
a holographic display unit for constructing and displaying a hologram,
wherein the hologram visually represents at least one object for
manipulating the external device;
a motion detector for detecting direct, real time movement and
location of a physical command object relative to the displayed hologram;
a controller in real time continuous communication with the motion
detector for converting the detected location of the physical command object
relative to its position with respect to the displayed hologram into a
command signal when the command object is at or near a contact point in
the hologram or performs a contact code; and
means for transmitting the command signal in real time to the external
device controllable by the controller, wherein the means for transmitting the
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command signal further includes means for the controller to discriminate
between generic motions made by the command object and motions specific
to the manipulation of the external device without user intervention.
V erard et al.,
hereinafter "V erard"
Sun et al.,
hereinafter "Sun"
Montellese
hereinafter "Montellese"
Prior Art Relied Upon
US 2014/0282008 Al
US 2011/0301813 Al
US 7,671,843 B2
Rejections on Appeal
Sept. 18, 2014;
Dec. 8, 2011;
Mar. 2, 2010;
Claim 1 stands rejected under 35 U.S.C. § l 12(a) as failing to comply
with the written description requirement. Non-Final Act. 3---6.
Claim 1 stands rejected under 35 U.S.C. § l 12(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor or a joint inventor, or for pre-AIA the applicant regards
as the invention. Id. at 6-11.
Claim 1 stands rejected under 35 U.S.C. § 102(a)(l) as being
anticipated by Verard. Id. at 12-13.
Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Sun, Montellese, and Verard. Id. at 14--18.
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ANALYSIS2
Written Description Rejection
Appellant argues that the Examiner erred in concluding the originally-
filed written description does not support the recitation of "means for
transmitting the command signal in real time to the external device
controllable by the controller" (emphasis included; bolding and internal
quotations omitted), as recited currently in independent claim 1. App. Br. 9.
In particular, Appellant argues that, although the Specification does not
recite, verbatim, the term "real-time," the ordinarily skilled artisan would
recognize an inference of "real-time" from the description "[t]he CPU 10
interprets motion of the command object 17 ... to transmit a command
signal to the robotic arm 110 for real, physical manipulation of the physical
object 115." Id. at 11 (citing Spec. i-f 20). According to Appellant, even
though the CPU has to interpret inputs to perform calculations, which will
take time, such processing is not antithetical to real time transmission. Id. at
11 (citing Spec. i-fi-123, 25). Appellant also argues that "real-time" is a
conventional term of art, which does not require a quantitative value. Id. at
11 (citing Evidence Appendix including a declaration previously filed under
37 CPR§ 1.132, dated Jan. 20, 2017). Therefore, Appellant submits that the
ordinarily-skilled artisan would readily appreciate that "real-time" does not
mean zero delay, but rather a delay "small enough that it does not interfere
2 Rather than reiterate all the arguments of Appellant and all the Examiner's
findings and conclusions, we refer to the Specification (filed Jun. 10, 2015)
("Spec."); Appeal Brief (filed November 6, 2017) ("App. Br."), the Reply
Brief (filed March 12, 2018) ("Reply Br."), and the Answer (mailed January
11, 2018) ("Ans."), and the [2nd] Non-Final Office Action (mailed June 7,
2017) ("Non-Final Act.") for the respective details.
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with the timely performance of the desired action." Id. Accordingly,
Appellant contends to have described "a real-time system" as "one which
controls an environment by receiving data, processing it, and returning the
results concurrently to affect the environment at that time." Id. at 13.
These arguments are persuasive. To satisfy the written description
requirement, a patent Specification must describe the claimed invention in
sufficient detail that one skilled in the art can reasonably conclude that the
inventor had possession of the claimed invention. Moba, B. V. v. Diamond
Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may
show possession of the claimed invention by describing the claimed
invention with all of its limitations using such descriptive means as words,
structures, figures, diagrams, and formulas that fully set forth the claimed
invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997). However, our reviewing court guides that "[a] description
which renders obvious the invention for which an earlier filing date is sought
is not sufficient." Lockwood, 107 F.3d at 1572 (quoting Jepson v. Coleman,
314 F.2d 533, 536 (CCPA 1963)). "[I]t is 'not a question of whether one
skilled in the art might be able to construct the patentee's device from the
teachings of the disclosure .... Rather, it is a question whether the
application necessarily discloses that particular device"' Id. (emphasis
added).
At the outset, we note it is indisputable that the term "real-time"
appears nowhere in Appellant's originally-filed Specification, drawings or
claims. The written description requirement does not impose an "in haec
verba" recitation of the disputed claim language in the original
Specification. It nonetheless requires a sufficient description of the claim
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subject matter so as to enable one of ordinary skills in the art to make and
use the invention. In re Wright, 866 F.2d 422, 425 (Fed. Cir 1989); see also
Agilent Techs., Inc. v. Ajjj;metrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009). As
correctly noted by Appellant, and undisputed by the Examiner, the
Specification indicates that the CPU interprets a command object to issue a
command signal to the robotic arm to manipulate a physical object. Spec.
i-fi-120, 23, 25. Therefore, the ordinarily-skilled artisan, having read
Appellant's Specification, would readily understand that Appellant had
possession of a command being performed by the robotic arm upon
receiving the command signal from a CPU, which has processed a user's
detected command input gesture. Because Appellant's Specification does
not define "real-time", the cited limitation must be given its broadest
reasonable interpretation consistent with Appellant's disclosure, as
explained in In re Morris:
[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted as
broadly as their terms reasonably allow."). Our reviewing court further
states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary
artisan after reading the entire patent." Phillips v. A WH Corp., 415 F .3d
1303, 1321 (Fed. Cir. 2005) (en bane). Consequently, we conclude that
under the broadest reasonable interpretation, "real time" denotes an event
"relating to a system in which input data is processed within milliseconds so
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that it is available virtually immediately as feedback." 3 Therefore, despite
the CPU processing the user input into a command subsequently executed by
the robotic arm, we agree with Appellant that the ordinarily-skilled artisan
would not interpret "real-time" to mean "without delay." Accordingly, we
do not agree with the Examiner's finding that the disclosed delay in
processing the input gesture cuts against the claimed real-time transmission
of the signal to the external device. Ans. 19-23. We thus find Appellant's
proffered definition of a real-time system as "one which controls an
environment by receiving data, processing it, and returning the results
concurrently to affect the environment at that time" to be reasonable, and to
comport fairly with the cited portions of the Specification as well as the cited
dictionary definition above. App. Br. 13. Because Appellant has shown that
he had possession of the command signal being transmitted in real-time to
the external device, we are persuaded of error in the Examiner's written
description rejection of claim 1.
Indefiniteness Rejection
Appellant argues that the Examiner erred in concluding that claim 1 is
indefinite. App. Br. 15-16. In particular, Appellant argues that the
ordinarily-skilled artisan would not construe the computer processing the
signal before transmitting it to the external device as somehow cutting
against the claimed real-time transmission. Id. at 16. Instead, the ordinarily
skilled artisan would be apprised that the scope of the disputed limitation
3 See https://en.oxforddictionaries.com/definition/real_time (last accessed
Apr. 26, 2018)
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requires some processing by the CPU before the signal is transmitted to the
external device. Id.
This argument is persuasive. "The legal standard for definiteness is
whether a claim reasonably apprises those of skill in the art of its scope."
In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v.
Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991)).
The "inquiry therefore is merely to determine whether the claims do, in fact,
set out and circumscribe a particular area with a reasonable degree of
precision and particularity." In re Moore, 439 F.2d1232, 1235 (CCPA
1971 ). For example, a claim is indefinite in a situation such as "where the
language 'said lever' appears in a dependent claim where no such 'lever' has
been previously recited .... " Ex parte Moelands, 3 USPQ2d 1474, 1476
(BP AI 1987).
As discussed above, we do not agree with the Examiner that the
claimed "real-time" transmission of the signal from the CPU to the external
device somehow implies an instantaneous transmission without delay or
prior to processing. Ans. 23-24. Instead, as discussed above, we agree with
Appellant that the ordinarily-skilled artisan would be readily apprised that
such real time transmission necessarily entails the requisite processing of the
signal by the CPU prior to being forwarded to the external device. Because
the Examiner has failed to show that the ordinarily-skilled artisan, having
read Appellant's Specification, would not be apprised of the scope of the
claim, we do not sustain this rejection.
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Anticipation Rejection
Appellant argues that the Examiner erred in finding that V erard
describes a computer that discriminates in real-time between generic
motions and specific motions made by a command object to manipulate an
external object without user intervention, as recited independent claim 1.
App. Br. 16-18. In particular, Appellant argues that although Verard
discloses a real-time procedure wherein a robot performs a specific
movement concurrently with a surgeon's performance, the cited procedure
does not discriminate between generic and specific movements. App. Br.
17-18 (citing Verard i-f 63). Likewise, Appellant argues that although
Verard alternatively discloses another procedure wherein the surgeon
reviews his/her movements before allowing the robot to perform them,
thereby discriminating between generic and specific movements, such
procedure is not performed in real-time and without user intervention. Id. at
18 (citing Verard i-fi-1 63, 64 ).
These arguments are persuasive. At the outset, we note the claim
requires the CPU distinguishing between generic and specific movements in
real-time, and without user intervention. It is undisputed that Verard's first
embodiment describes a CPU that performs a specific movement in real-
time, and without user intervention, but it does not contemplate generic
movements to thereby discriminate between the two types of movements.
Verard i-f 63. It is further undisputed that Verard's second embodiment
discriminates between specific movements and generic movements, but it
does not do so in real-time and without user intervention. Id. i-fi-163, 64.
Although the combination of the cited embodiments of V erard teaches or
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suggests the disputed claim limitations under an obviousness standard, 4 we
agree with Appellant that none of the cited embodiments, alone, describes
the disputed limitations to satisfy the anticipation rejection before us.
Accordingly, we are persuaded of error in the Examiner's anticipation
rejection of claim 1.
Obviousness Rejection
Appellant argues that the Examiner erred in concluding that the
combination of Sun, Montellese, and Verard renders claim 15 unpatentable.
App. Br. 20-24. In particular, Appellant contends the cited references are
not properly combined to teach or suggest the following limitation of claim
15:
means for transmitting the command signal to the vehicle's steering
system controllable by the controller, wherein the means for
transmitting the command signal further includes means for the
controller to discriminate between back-and-forth motions made by
the user's hands and clockwise or counterclockwise rotational motions
specific to the manipulation of the vehicle's steering system without
user intervention.
App. Br. 21.
Appellant argues that although Sun discloses a controller displaying
virtual lane markings on a windshield of a vehicle, wherein the markings
include the vehicle's relative position within the roadway, Sun lacks the
claimed hologram, as well as the disputed limitations. Id. at 22. Likewise,
Appellant argues although Montellese discloses projecting an image of a
steering wheel that can receive an input to modify a holographic image of
the steering wheel to its new perceived location, the cited disclosure is
4 In the event of continued prosecution, the Examiner should consider
whether claim 1 is obvious over Verard.
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redundant to Sun's controller for detecting movement of the steering wheel
into a modified display of the roadway markings, but fails to cure the noted
deficiencies of Sun. Id. at 23. Additionally, Appellant argues the
Examiner's reliance on Verard to cure the noted deficiencies of Sun and
Montellese is misplaced because they do not have the structure or a need for
Verard's procedure to be performed thereupon. Id. at 23-24.
Appellant's arguments are not persuasive. At the outset, we note
Appellant's mere allegation that Sun does not teach a hologram does not
address or persuasively rebut the Examiner's finding that Sun teaches a
holographic images projected by a holographic projector. Ans. 28 (citing
Sun i-f 16). Likewise, Appellant's mere allegation does not persuasively
rebut the Examiner's finding that Verard's disclosure relied upon by the
Examiner teaches the claimed means for transmitting the command signal.
Final Act. 17 (citing Verard i-f 63). Although Appellant makes a nominal
discussion of textual portions relied upon by the Examiner to reject those
claims, Appellant has not provided a meaningful analysis of those textual
portions to distinguish the disputed claim limitations therefrom. Appellant
is reminded that a general allegation as to the purported benefits of the
claimed invention, and a general discussion of the prior art relied upon by
the Examiner in the rejection are not tantamount to a responsive argument.
Such a response to the Examiner's findings is insufficient to persuade us of
Examiner error, as mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip
op. at 7-8 (BP AI Aug. 10, 2009) (informative); see also In re Lovin, 652
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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.").
Additionally, we find the Examiner's proposed combination of the
cited teachings of Sun, Montellese, and Verard is no more than a predictable
arrangement of old elements, with each performing the same function it had
been known to perform, yielding no more than one would expect from such
an arrangement. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
The ordinarily-skilled artisan, being "a person of ordinary creativity, not an
automaton," would be able to fit the teachings of the cited references
together like pieces of a puzzle to predictably result in a steering wheel
including a holographic user interface system having a controller that
transmits a command signal (e.g., clockwise and counterclockwise rotational
motions of the wheel) to the vehicle steering system without user
intervention. Id. at 420-21. Because Appellant has not demonstrated that
the Examiner's proffered combination would have been "uniquely
challenging or difficult for one of ordinary skill in the art," we agree with the
Examiner that the proposed modification would have been within the
purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at
418). Consequently, we are not persuaded of error in the Examiner's
obviousness rejection of claim 15.
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DECISION
For the above reasons, we reverse the Examiner's written description
rejection, the indefiniteness rejection, and the anticipation rejection of claim
1. However, we affirm the Examiner's obviousness rejection of claim 15.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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