Ex Parte Asada et al

Patent Trial and Appeal Board

Feb 27, 2019

13287424 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/287,424 11/02/2011 Haruhiko Harry Asada
55740 7590 02/27/2019
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
UNITED ST A TES OF AMERICA
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.
MIT.14819K 8402
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
02/27/2019 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 HARUHIKO HARRY ASADA, ANIRBAN MAZUMDAR,
IAN C. RUST, and JUN FUJITA
Appeal 2018-002848
Application 13/287 ,424
Technology Center 3600
Before JOHN C. KERINS, EDWARD A. BROWN, and LISA M. GUIJT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 2, 6-10, and 21. 1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
STATEMENT OF THE CASE
The independent claims on appeal, claims 1 and 21, reproduced
below, are exemplary of the subject matter on appeal.
1 Appeal is taken from the Non-Final Office Action dated April 13, 2017.
Appeal2018-002848
Application 13/287,424
1. An inspection robot for inspecting a nuclear reactor
compnsmg:
an inspection hull;
an on-board control mechanism that controls the operation
of the inspection robot, the on-board control mechanism controls
one or more sensors of the inspection robot to inspect one or
more structures in the nuclear reactor as well as the movement
by the inspection robot, said inspection robot includes a smooth
outer surface, said inspection robot includes said one or more
sensors;
a gimbal mechanism that rotates the hull by shifting the
center-of-mass so that gravity and buoyancy forces generate a
moment to rotate the hull in a desired direction;
a camera that is coupled to the gimbal mechanism to
provide visual display of the one or more structures in the nuclear
reactor, the camera rotates about an axis using the gimbal
mechanism; and
a wireless communication link which allows the
inspection robot to communicates [sic] wirelessly to an operator
at a remote station, the operator issues commands to the
inspection robot using the wireless communication link so as to
perform various inspection tasks using the on-board control
mechanism, the gimbal mechanism, and the camera, wherein the
inspection robot communicates its findings with respect to the
inspection tasks to the operator using the wireless
communication link to determine if the internal components of
the inspection robot fail during an inspection, wherein if a failure
occurs the inspection robot uses a homing procedure to return to
its original position prior to the inspection.
21. An inspection robot comprising:
a hull;
a gimbal mechanism that rotates the inspection robot hull
by shifting the center-of-mass so that gravity and buoyancy
forces generate a moment to rotate the hull in a desired direction;
and
a camera that is coupled to the gimbal mechanism and that
rotates about an axis using the gimbal mechanism.
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Application 13/287,424
THE REJECTIONS
I. Claims 1, 2, and 6-9 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite. 2
II. Claim 21 stands rejected under 35 U.S.C. § I02(b) as
anticipated by Salkeld (US 2011/0290937 Al; published Dec. 1, 2011).
III. Claims 1, 2, and 6-9 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Asfar (US 7,290,496 B2; issued Nov. 6, 2007), Salkeld,
and Oakley (US 2011/0301784 Al; published Dec. 8, 2011).
IV. Claim 10 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Asfar, Salkeld, Oakley, and Mukherjee (US 6,289,263;
issued Sept. 11, 2001 ).
ANALYSIS
Rejection I
Regarding the limitation recited in independent claim 1 as set forth
supra, "wherein the inspection robot communicates its findings with respect
to the inspection tasks ... to determine if the internal components of the
inspection robot fail during an inspection," the Examiner finds it is unclear
how the communication of the findings relative to the inspection tasks
determine if the internal components of the robot have failed. Non-Final
Act. 4; Ans. 4. Additionally, regarding the limitation recited in independent
claim 1 as set forth supra, "wherein if a failure occurs the inspection robot
uses a homing procedure to return to its original position prior to the
inspection," the Examiner finds that "it is unclear if the failure that triggers
2 The Examiner's inclusion of claim 10 in Rejection I has been withdrawn.
Ans. 4; Non-Final Act. 4.
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Application 13/287,424
the homing procedure ... is referring to a failure in the reactor or in the
robot." Non-Final Act. 4; Ans. 4.
Appellants submit that "[i]t is well understood the preamble has no
patentable weight" and dispute whether the preamble is required to recite
how the communication of inspection tasks determines if the robot's internal
components have failed. Appeal Br. 7. Appellants argue that the Examiner
is "not assessing the full brea[ d]th of the claims and focusing on a selective
portion of claim 1 to insist [on] a change to the preamble." Id. Appellants
further submit that the Examiner is unnecessarily requiring the narrowing of
claim 1 to include "details of indicating a failure to the operator." Reply Br.
7.
A claim is properly rejected as indefinite if, after applying the
broadest reasonable interpretation in light of the specification, the metes and
bounds of a claim are not clear because the claim "contains words or phrases
whose meaning is unclear." In re Packard, 751 F.3d 1307, 1310, 1322 (Fed.
Cir. 2014) (per curiam); see also Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential)
( adopting the approach for assessing indefiniteness approved by the Federal
Circuit in Packard). Generally, a preamble is not limiting where an
applicant defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention.
See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997).
We agree with Appellants that the language "for inspecting a nuclear
reactor" in the preamble of claim 1 is a statement of use for the claimed
inspection robot, and also that, with respect to the body of the claim, the
recitation, "to inspect one or more structures in the nuclear reactor," is a
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Application 13/287,424
statement of use for the claimed on-board control mechanism that controls
sensors, and the recitation, "to provide visual display of the one or more
structures in the nuclear reactor," is a statement of use for the claimed
camera, neither of which require additional structure or further limit the
claimed inspection robot.
Notwithstanding, the Examiner's rejection does not rely on whether
the preamble is given patentable weight, but rather, the Examiner correctly
construes claim 1 as requiring the communication by the robot of inspection
task findings to the operator to be determinative of a failure of the robot's
internal components. In other words, the Examiner's issue with claim 1 is
that there is no explanation as to how inspection task findings sent to the
operator indicate that there is an internal component failure within the robot.
We determine that the claim language is clear: the robot's inspection
task findings determine if internal components in the robot have failed. In
the event the Examiner determines that the Specification fails to support the
subject matter claimed, rejections may be made pursuant to 35 U.S.C. § 112,
first paragraph, which addresses a lack of written description and/or
enablement of the claims as provided by the specification. 3
Additionally, we determine that claim 1 is clear that it is a
determination of the failure of the internal components of the robot that
triggers the claimed homing procedure. In this respect, we interpret the
recitation in claim 1 of "prior to the inspection" as modifying the "original
position," and not pertaining to the timing of the homing procedure.
3 Notably, the disputed limitation, which did not appear in the claims as
originally filed, was added by an Amendment dated Oct. 26, 2015, which
provided no indication of subject matter support from the Specification.
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Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2 and 6-9 depending therefrom, under
35 U.S.C. § 112, second paragraph, as indefinite.
Re} ection II
Regarding independent claim 21, the Examiner finds that Salkeld
discloses an inspection robot (i.e., unmanned aerial vehicle (UA V) 10)
including a gimbal mechanism (i.e., tilt motor 26) that rotates the vehicle's
hull by shifting the center-of-mass so that gravity and buoyancy forces
generate a moment to rotate the hull in a desired direction, as claimed. Non-
Final Act. 5 (citing Salkeld ,r,r 28-30, Figs. 1, 2).
Appellants acknowledge that Salkeld's tilt motor 26 achieves
displacement of the center of gravity of the UA V. Appeal Br. 11.
Appellants argue, however, that Salkeld "makes no mention of shifting the
center-of-mass so that gravity and buoyancy forces generate a moment,"
because Salkeld's invention "is an aircraft [that] does not require buoyancy."
Id.; Reply Br. 10-11.
The Examiner responds by defining the claim term "buoyancy" as
ordinarily meaning "the difference of an object's density and the fluid or gas
it displaces." Ans. 6. The Examiner finds that claim 1 does not specify the
fluid relative to the claimed buoyancy forces and determines that, with
respect to Salkeld's motor 26, "[ w ]hile the aircraft has a negative buoyancy
in air and does not float independently of other actions, buoyancy forces act
on the apparatus and must be accounted for by the device to achieve flight,
rotation and/ or movement." Id. ( emphasis added).
Salkeld discloses that
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Application 13/287,424
the U AV may act as a pendulum, consisting of a suspension point
(the set(s) of rotary wings) with a mass attached to the other end
(the rest of the UA V, e.g. the power unit, support system,
surveillance system etc.). It is well known that when the mass of
a pendulum is moved out from under its suspension point and
released, it will swing to get back to its original stable
position ....
In the present invention, a mass is moved out from under
its suspension point, but is the maintained in such a non-
equilibrium position. Thus the [center-of-gravity (CoG)] of the
UA Vis controllably displaced, and the wing section (12) is tilted
(in effect, dragged down) in the direction of the shift of the mass
in an attempt to compensate. This causes the UA V to move in
the direction that the blades (20) are now tilted, and the blades
will remain in that state until the mass returns to hang directly
under the centre of lift.
Salkeld ,r,r 34, 35. Thus, Salkeld does not explicitly describe buoyancy
forces.
When relying upon the theory of inherency, "the [E]xaminer must
provide a basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art." Ex Parte Levy, 17 USPQ2d
1461, 1464 (BP AI 1990). Although Salkeld is silent about buoyancy, the
Examiner has provided technical reasoning to reasonably support the
determination that buoyancy is a force that inherently contributes to generate
the moment for rotating Salkeld's UA V, by determining that buoyancy
forces act on an aircraft during flight, as set forth supra. Further,
Appellants' conclusory statement that "an aircraft ... does not require
buoyancy" is insufficient to show error in the Examiner's determination that
buoyancy forces relative to Salkeld's UA Vin air inherently contribute to
forces that generate the moment that rotates Salkeld's UA Vin a desired
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direction. In re Pearson, 494 F.2d 1399, 1404 (CCPA 1974) ("Attorney's
argument in a brief cannot take the place of evidence.").
Accordingly, on the record before us, we sustain the Examiner's
rejection of claim 21 under 35 U.S.C. § 102(b) as anticipated by Salkeld.
Rejection III
Regarding independent claim 1, the Examiner finds, inter alia, that
Asfar discloses an inspection robot (i.e., unmanned autonomous submarine
100) having a mechanism that rotates the hull by shifting the center-of-mass
so that gravity and buoyancy forces generate a moment to rotate the hull in a
desired direction, and also discloses a wireless communication link (i.e.,
remote control (RC) system 2612). Non-Final Act. 7-8 (citing Asfar
12:21 +, Figs. 1-3, 13-22).
The Examiner determines that Asfar does not disclose that the
mechanism is a gimbal mechanism, as claimed, and the Examiner relies on
Salkeld for teaching a gimbal mechanism (i.e., tilt motor 26) that rotates the
hull by shifting the center-of-mass so that gravity and buoyancy forces
generate a moment, as claimed. Id. at 8 ( citing Salkeld ,r 28). The Examiner
reasons that it would have been obvious to modify Asfar's robot (or
submarine 100) "for the predictable result of allowing the robot to have
inherent positioning over a target for vertical or near vertical inspection."
Id.
The Examiner also determines that Asfar does not disclose that RC
system 2612 is capable of performing a homing procedure to return the robot
to its original position, as claimed, and the Examiner relies on Oakley for
teaching a "fail-safe mechanism" that "performs the homing procedure to
allow the inspection robot [(i.e., reduced scale helicopter 100)] to go back to
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Application 13/287,424
the original start point ... wherein the fail-safe mechanism detects a failure
in the wireless communication." Id. at 8-9 (citing Oakley ,r,r 149-153). The
Examiner reasons that it would have been obvious to modify Asfar's
submarine "for the predictable result of returning and shutting down the
robot to the user in the event of adverse conditions to prevent further damage
to the machine." Id. at 9.
Appellants argue that the Examiner's proposed combination "does not
teach or suggest an operator using the wireless communication link to
determine if the internal components of the inspection robot fail during an
inspection," as claimed. Appeal Br. 9. In particular, Appellants submit that
"without the communication link there is no way the inspection robot can
communicate its findings with respect to the internal components." Reply
Br. 8.
We are persuaded by Appellants' argument. Claim 1, as set forth and
construed supra, requires the inspection robot to communicate inspection
task findings to the operator using the wireless communication link, and
claim 1 further requires that the communicated findings are determinative of
whether the robot's internal components have failed during the inspection.
Oakley's disclosure that a lack of wireless communication with the operator
triggers Oakley's helicopter to return home (Oakley ,r,r 149-150) fails to
disclose that inspection task findings, which are communicated to the
operator via a wireless link between the operator and the helicopter, are
determinative of an internal component failure within the helicopter. In
other words, although a lack of communication with the helicopter may
suggest that the internal wireless communication components within the
helicopter have failed, such a failure is not positively determined by
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inspection findings that are communicated to the operator via the wireless
communications link.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1, and claims 2 and 6-9 depending therefrom under
35 U.S.C. § 103(a) as unpatentable over Asfar, Salkeld, and Oakley.
Re} ection IV
The Examiner's reliance on Mukherjee for teaching a robot with a
gimbal mechanism that generates two orthogonal axes of body rotations by
moving a mass in two directions does not cure the deficiencies in the
Examiner's findings with respect to Oakley and as applied to claim 1 supra.
See Rejection III; Non-Final Act. 9.
Accordingly, we do not sustain the Examiner's rejection of claim 10.
DECISION
The Examiner's rejection of claims 1, 2, and 6-9 under 35 U.S.C.
§ 112, second paragraph, as indefinite is REVERSED.
The Examiner's rejection of claim 21 under 35 U.S.C. § 102(b) as
anticipated by Salkeld is AFFIRMED.
The Examiner's rejection of claims 1, 2, and 6-9 under 35 U.S.C.
§ 103(a) as unpatentable over Asfar, Salkeld, and Oakley is REVERSED.
The Examiner's rejection of claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Asfar, Salkeld, Oakley, and Mukherjee is 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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