Ex Parte Trompeter

Patent Trial and Appeal Board

Jul 30, 2018

14710933 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/710,933 05/13/2015
76525 7590 07/30/2018
GERALD R. BLACK, ESQ.
26234 SUMMERDALE DRIVE
SOUTHFIELD, MI 48033
FIRST NAMED INVENTOR
Matthew E. Trompeter
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.
TRP-USPA-001 4272
EXAMINER
LIN, ABBY YEE
ART UNIT PAPER NUMBER
3664
MAIL DATE DELIVERY MODE
07/30/2018 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 MATTHEW E. TROMPETER
Appeal2017-009736
Application 14/710,933
Technology Center 3600
Before JOHN C. KERINS, WILLIAM A. CAPP and
ANTHONY KNIGHT, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 21--40. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-009736
Application 14/710,933
THE INVENTION
Appellant's invention relates to a method for calibrating industrial
robots. Spec. 1. Claim 21, reproduced below with language of particular
interest emphasized in italics, is illustrative of the subject matter on appeal.
21. A method for determining a location of a robotic
reference frame for a system, said system including a work
object, said work object including a first and a second laser, the
method comprising:
a. securely mounting said work object relative to a fixture,
said fixture being positioned on an automotive shop
floor;
b. projecting a first laser beam from said first laser and
projecting a second laser beam from said second laser,
said first laser beam and said second laser beam
intersecting at a laser intersection point;
c. downloading an off-line program relative to said work
object, said work object being disposed relative to said
robot tool in a position defined by CAD simulation
software on said automotive shop floor; and
d. manipulating said robot tool into alignment with said
laser intersection point on said automotive shop floor,
said laser intersection point defining a position of said
robotic reference frame on said automotive shop floor,
enabling a user to locate said robotic reference frame on
said automotive shop floor which enables said user to
correct a robot work path or enhance accuracy.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Inoue
Sawdon
de Smet
Berckmans
Keibel
us 4,578,556
US 2005/0035516 Al
US 2009/0157226 Al
US 2011/0129792 Al
US 2011/0153297 Al
2
Mar. 25, 1986
Feb. 17,2005
June 18, 2009
June 2, 2011
June 23, 2011
Appeal2017-009736
Application 14/710,933
Frank Shaopeng Cheng, Calibration for Robot Reference
Frames for Enhanced Robot Positioning Accuracy, Robot
Manipulators, Marco Ceccarelli (Ed.), ISBN: 978-953-7619-06-
0, lnTech, 1
The following rejections are before us for review:
1. Claims 21--40 rejected under 35 U.S.C. 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
2. Claims 21 and 27 are rejected on the ground ofnonstatutory double
patenting as being unpatentable over claims 1, 3, 5, 8, 9, 12 of U.S. Patent
No. 9,061,421.
3. Claims 21, 27, and 33 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 7,
10, 11, and 13 of U.S. Application No. 14/724,966.
4. Claims 33-37, and 40 are rejected under 35 U.S.C. § 102(b) as
being anticipated by de Smet.
5. Claims 28-31 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over de Smet and Keibel.
6. Claim 32 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over de Smet, Keibel, and Sawdon.
7. Claim 38 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over de Smet and Inoue.
8. Claim 39 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over de Smet and Sawdon.
1 Available from: http://www. intechopen .com/books/robot_
manipulators/calibration_ of _robot_reference frames_for enhanced
ro bot_positioning_accuracy.
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Appeal2017-009736
Application 14/710,933
9. Claims 21, 25, and 27 are rejected under 35 U.S.C. § 103(a), as
being unpatentable over Berckmans and Keibel.
10. Claim 22 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over Berckmans, Keibel, and de Smet.
11. Claim 23 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over Berckmans, Keibel, and Inoue.
12. Claim 24 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over Berckmans, Keibel, and Cheng.
13. Claim 27 is rejected under 35 U.S.C. § 103(a), as being
unpatentable over Berckmans, Keibel, and Sawdon.
OPINION
Section 112 Indefiniteness
Claims 21, 2 8, and 3 3 - "Relative To"
The Examiner focuses on the meaning of "relative to" in the
limitation: "downloading an offline program relative to said work object,
said work object being disposed relative to said robot tool in a position
defined by CAD simulation software on said automotive shop floor." Final
Action 5, Claims App. claim 21. The Examiner notes that independent
claims 28 and 33 contain similar "relative to" limitations. The Examiner
raises the following questions:
Is the offline program being downloaded to the work object (the
work object doesn't appear to have a processor at all, so it is not
clear how this is possible if this is the case)?
Final Action 5.
Id.
Is it downloaded to some other item relatively close to the work
object?
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Application 14/710,933
Id.
Id.
Id.
Id.
Does the offline program merely describe a location of the work
object?
Is the program the same thing as the CAD software?
Is it related to the CAD software?
Where is this downloading coming from and going to?
The Examiner observes that Appellant's Specification does not
provide further elaboration as it merely repeats the same language verbatim.
Id.
In opposing the rejection, Appellant takes the position that it is
entitled to define and claim the invention "essentially in whatever terms" it
may choose. Br. 18. Otherwise, Appellant fails to address the various
questions posed by the Examiner. See generally Br.
Appellant asserts that, at the time the application was filed, the
average automotive shop engineer had the necessary materials and possessed
the requisite skill to create an integrated apparatus using various sensors.
Id., citing US 9,016,421 to Trompeter ("Trompeter '421"). Appellant argues
that a person of ordinary skill in the art would have knowledge of what a
"work object" is and where and how an offline program would be
downloaded "relative to the work object." Id. Appellant insists that the
language at issue "is definite and clear" where the Specification indicates
that the software is downloaded "to the work object or frame." Id. at 20.
In addition, Appellant refers, once again, to Trompeter '421 and takes
the position that, since the Office already issued one patent with similar
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Application 14/710,933
claim language, it has already been determined that the claim language is
definite. Id.
In response, the Examiner cites to the Supreme Court decision in
Nautilus, Inc. v. Biosig Instrument, 134 S.Ct. 2120 (2014), as establishing a
standard for indefiniteness requiring that the patent claims inform those
skilled in the art about the scope of the invention "with reasonable
certainty." Ans. 4. The Examiner criticizes Appellant's "average
automotive shop engineer" argument as vague. Ans. 5 ("without specifics to
the application at issue").
The Examiner observes that the Specification lacks any clear teaching
that the "work object" has a computer processor. Id. According to the
Examiner, this raises a question whether the program is downloaded to
something that is merely in close proximity to the work object and whether
the offline program that is downloaded is the same as, or different from, the
CAD simulation software. Id.
The Examiner takes Appellant to task for arguing that the claim
language means downloaded "to" the work object, when the actual claim
language is downloaded "relative to" to the work object. Id. at 6. The
Examiner quotes passages from Appellant's Specification teaching that the
off-line program is downloaded "relative to" the work object, not "to" the
work object. Id. quoting Spec. ,r,r 49, 58.
The test for definiteness under 35 U.S.C. § 112, is whether "those
skilled in the art would understand what is claimed when the claim is read in
light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). The PTO can
properly reject a claim as indefinite if the claim is ambiguous, vague,
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Application 14/710,933
incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014). Section 112 places the burden of precise claim
drafting on the applicant. See In re Morris, 127 F.3d 1048, 1056-57 (Fed.
Cir. 1997). During patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed. See In re Zietz, 893 F.2d 319, 321 (Fed. Cir.
1989). The statutory indefiniteness standard serves an important public
notice function. See Predicate Logic, Inc. v. Distributive Software, Inc., 544
F.3d 1298, 1300 (Fed. Cir. 2008).
With respect to the Examiner's reliance on Nautilus, we take this
opportunity to remind Appellant and the Examiner that the Board recently
issued a Precedential Decision in the case of Ex parte McAward, Case No.
2015-0064116, 2017 WL 3669566 (PTAB Aug. 25, 2017) to specifically
address the applicability of Nautilus to proceedings before the PTO. In
McAward, we pointed out that an examiner's indefiniteness rejection begins
what is intended to be an interactive process in which the applicant has the
opportunity to respond to the examiner by amending the claims or by
providing evidence or explanation that shows why the claims are not
indefinite. Id. at *2, citing Packard, 751 F.3d at 1311-12. Among other
things, the process is intended to explore the scope and breadth of the claim
language and to expose ambiguities that may present themselves under the
broadest reasonable interpretation standard that is used during prosecution.
Id. at *3.
Thus, in McAward, the Board emphasized the importance of an
applicant engaging in a dialog with the Examiner to clarify the meaning of
claim language. Among other things, McAward places applicants on notice
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Application 14/710,933
that, if they fail to provide a satisfactory response to an initial Section 112
indefiniteness rejection, the PTO can properly reject the claim as indefinite.
McAward, at *6, citing Packard, 751 F.3d at 1311.
In the instant case, the Examiner rejected independent claims 21, 28,
and 33 as indefinite in view of the "downloading . .. relative to" claim
language. Final Action 5. In the rejection, the Examiner posed a series of
questions inquiring into the meaning and scope of the claims. Id. However,
rather than address the Examiner's questions or otherwise engage the
Examiner in a dialogue as contemplated by Packard and McAward,
Appellant seemingly dismisses the Examiner's concerns out of hand and
merely offers a conclusory statement that a person of ordinary skill in the art
would understand what the claim means. Br. 19 ("A qualified person of
ordinary skill in the art would have knowledge of the 'work object'
referenced and where and how an offline program would be downloaded
relative to the work object").
We note several problems with Appellant's approach to the
Examiner's rejection. First, Appellant altogether ignores the
Packard/McAward process for clarifying and defining the scope of the
claims. Second, although Appellant contends that a person of ordinary skill
in the art would understand what the claim means, Appellant does not
inform either the Examiner or the Board what such meaning is. Third,
Appellant fails to appreciate that the claim construction process entails
resolving ambiguity. See e.g., Ex Parte Miyazaki, 89 USPQ2d 1207, 1211
(BP AI 2008) (precedential) ("if a claim is amenable to two or more plausible
claim constructions, the US PTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
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Application 14/710,933
holding the claim unpatentable ... as indefinite"). In other words, just
because Appellant or some other practitioner can assign one meaning to the
claim language, such may not render the claim definite if it is also
susceptible to other interpretations or the breadth of the claim is otherwise
unclear.
In the instant case, it is reasonably clear to us that an "offline
program" is software that is related to an industrial manufacturing process,
but is developed on a computer that is other than a computer that is
controlling a robotic manufacturing process in real-time. Hence there is a
need to "download" the program from the computer where the program is
developed to the computerized, robotic machinery where it is actually used.
It is similarly reasonably clear to us that a "work object" is a piece of
structure. See e.g., Figs. 1-3 identifying "work object" 120. However, we
agree with the Examiner that it is unclear what it means to download an
offline program "relative to" a "work object." Among other things, the
"relationship" between the program and the work object could involve
physical proximity, subject matter or content of the program, and/or a send-
receive communication link. These issues should be addressed and resolved
during the patent prosecution process.
We note that the patent drafter is in the best position to resolve
the ambiguity in the patent claims, and it is highly desirable that
patent examiners demand that applicants do so in appropriate
circumstances so that the patent can be amended during
prosecution rather than attempting to resolve the ambiguity in
litigation.
Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1255 (Fed.
Cir. 2008) (cited with approval in Nautilus, 134 S. Ct. at 2129).
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Finally, we tum to Appellant's argument that the claims should be
considered definite because the PTO has already issued the Trompeter '421
patent with similar claim language. Br. 19. We note that Appellant has not
brought any of the prosecution record of Trompeter '421 to our attention in
this proceeding. It does not appear to us that the definiteness of the "relative
to" term at issue in this appeal was raised as an issue by the Examiner in the
earlier case. See generally, prosecution history of App. No. 13/385,797 that
eventually issued as the '421 Patent. We note that the '421 Patent was
examined by a different examiner than the application currently under
appeal. We decline to speculate as to whether the examiner of the '421
Patent actually considered and determined whether the "relative to"
language is definite. Otherwise, we are cognizant that the definiteness of the
claim language of an issued patent is subject to review by an Article III
Court, see Halliburton, supra; Nautilus, supra, and is also subject to a
second look by the PTO in either a re-examination or a post-grant review
proceeding. See e.g., Oil States Energy Services, LLC v. Greene's Energy
Group, LLC, 138 S.Ct. 1365, 1370 (2018) (patent grant is a public right that
is subject to cancellation by the PTO).
Appellant's remaining claims depend from either claim 21, 28, or 33
and, as such, suffer from the same infirmity as the claims from which they
depend. Therefore, we sustain the Examiner's Section 112 rejection of
claims 21--40 due to the indefiniteness of the "relative to" language in claims
21, 28, and 33.
Claims 28, 33 - "Can be"
The Examiner rejected claims 28 and 33 as each contains a limitation
directed to a robot tool that "can be is" manipulated into alignment. Final
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Action 6. For purposes of Examination, the Examiner treated the
surrounding claim limitation optional on account of use of the term "can."
Id. Appellant argues that the claim language appears in a "whereby" clause
and that "whereby" and "wherein" clauses are proper claim limitations.
Br. 21-22. Appellant argues that the limitations should not be read as
optional. Id. at 21.
Appellant's brief does not address the Examiner's concern that the
"can be is" language renders the claim indefinite. Id. Thus, Appellant does
not fairly meet the substance of the Examiner's rejection and otherwise does
not apprise us of error. See Ex parte Breed, Case 2012-003990, 2014 WL
5768548 (PTAB 2014) (use of "can be" term rendered claims indefinite.).
We sustain the Examiner's indefiniteness rejection of claims 28
and 33, together with the claims that depend therefrom, on account of the
"can be is" language in claims 28 and 33.
Claim 28 - "work object"
In view of our determination that claim 28 is indefinite for reasons
detailed hereinabove, we do not reach the issue of whether the term "work
object" renders claim 28 indefinite. See 37 C.F.R. § 4I.50(a)(l) (The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed). It appears to us that
the meaning of "work object" may become clearer after Appellant better
explains what it means to download an offline program "relative to" a work
object in accordance with our previous discussion.
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Application 14/710,933
Claims 28 and 33 - "whereby said robot tool . .. "
The Examiner maintains the following:
Claims 28 and 33 recite "whereby said robot tool can be is
manipulated into alignment relative to said laser intersection
point, said laser intersection point defining said position of said
robotic reference frame on said automotive shop floor enabling
a user to locate said robotic reference frame on said
automotive shop floor which thereby enables said user to
correct a robot work path or enhance accuracy." This appears
to be a narrative, so it is unclear what is actually being claimed.
Final Action 6. Appellant does not appear to advance any arguments
specifically directed to this ground of rejection other than to maintain that,
generally, "whereby" clauses may be allowed in patent claims. See
generally, Br. This argument is not sufficient to apprise us of error.
Accordingly, we sustain the Examiner's indefiniteness rejection of
claims 28 and 33, together with claims that depend therefrom, on account of
the "whereby said robot tool ... " claim language.
Double Patenting and Art Rejections
Double Patenting
In view of our determination that all pending claims are indefinite for
reasons detailed hereinabove, we do not reach the issue of whether some or
any of the pending claims are properly rejected on the grounds of non-
statutory double patenting. 37 C.F.R. § 4I.50(a)(l).
Unpatentability of Claims 21-40
Because we have concluded that all pending claims are indefinite, the
prior art rejection of these same claims must fall because it is necessarily
based on a speculative assumption as to the meaning of the claims. In re
Steele, 305 F.2d 859, 862 (CCPA 1962).
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Accordingly, we proforma reverse the Examiner's art rejections,
without opinion.
DECISION
The decision of the Examiner to reject claims 21--40 under 35 U.S.C.
§ 112(a) is affirmed.
The decision of the Examiner to reject claims 21--40 under 35 U.S.C.
§ 103 is proforma reversed.
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
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