Ex Parte Boulanger et al

Patent Trial and Appeal Board

Apr 25, 2017

13622737 (P.T.A.B. Apr. 25, 2017)

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.
13/622,737 09/19/2012 Philippe BOULANGER 690187.409 9963
500 7590 04/25/2017
SFFD TNTFT T FFTT TAT PROPFRTY T AW GROT TP T T P
EXAMINER
701 FIFTH AVE AGHEVLI, REZA
SUITE 5400
SEATTLE, WA 98104 ART UNIT PAPER NUMBER
2485
MAIL DATE DELIVERY MODE
04/25/2017 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 PHILIPPE BOULANGER,
SAMIRA BOUZIT-BENBERNOU, and FREDERIC TRESCAZES
Appeal 2016-007259
Application 13/622,737
Technology Center 2400
Before ERIC B. CHEN, KARA L. SZPONDOWSKI, and
PHILLIP A. BENNETT, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Non-Final Rejection of claims 1—13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
Appeal 2016-007259
Application 13/622,737
STATEMENT OF THE CASE
Appellants’ invention is directed to an apparatus for sizing a parcel.
Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An automatic parcel sizing device comprising:
a trihedral parcel support having three panels for
receiving a parcel to be sized, each panel of which being
disposed orthogonal to the other two panels and defining a
vertex at an intersection point of said three panels,
a unique fixed optical sensor for capturing an image of
the parcel,
and a processor unit in signal communication with said
unique fixed optical sensor for determining from said captured
image of the parcel the respective dimensions of three parcel
edges which have a common vertex,
wherein said vertex of the trihedral parcel support is
disposed upside down such that, due to the gravity, the parcel is
correctly placed regarding the trihedral parcel support in always
a same location and said unique fixed optical sensor is placed
vertically below said vertex and at a fixed distance from said
vertex.
REJECTIONS
Claims 1, 3, 4, 6, and 10-13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Dlugos (US 5,841,541; issued
Nov. 24, 1998) and Prutu (US 2003/0075416 Al; published Apr. 24, 2003)
(“Prutu”).
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dlugos, Prutu, and Horhann et al. (US
2006/0112023 Al; published May 25, 2006) (“Horhann”).
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Application 13/622,737
Claims 5 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dlugos, Prutu, and Gunn (US
4,024,380; issued May 17, 1977).
Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dlugos, Prutu, and Wang et al. (US
2009/0039167 Al; published Feb. 12, 2009) (“Wang”).
ANALYSIS
The Examiner finds Dlugos teaches most of the limitations in claim 1,
except “Dlugos does not explicitly disclose parcels to be placed on the
parcel support platform so that the parcel is stable with respect to
gravitational force.” Non-Final Act. 5. The Examiner, therefore, relies on
Prutu, as teaching locating “the approximately center of gravity” of the
parcel. Id., citing Prutu 112. The Examiner further finds:
tilting the supporting structure so that the weight of the parcel is
supported by three side panels, as opposed to just one panel, is
such a minor modification to the combination of Dlugos and
Prutu that would have been obvious to a person of ordinary skill
in the art at the time the invention was made.
Id. at 3^4; Ans. 10. The Examiner finds one of ordinary skill in the art
would be motivated to combine Dlugos and Prutu, and to make the “minor
improvement” in order “to facilitate parcel measurement, identification,
sorting and delivery.” Non-Final Act. 6; Ans. 10.
Appellants contend “Dlugos teaches positioning the emitter scanners
34, 36 above the point where the upright adjacent walls 16, 22 meet the
platform 12.” App. Br. 14. Appellants argue “if the emitter scanner 34 were
vertically below the point where the upright adjacent walls 16, 22 meet the
platform 12, the CPU 32 would fail to correctly calculate the dimensions of
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Application 13/622,737
the parcel PI along the calibrated reflective strips 14, 20.” Id. at 13.
Appellants further contend “the Examiner fails to articulate any reason for
modifying the proposed combination of Dlugos and Prutu absent
impermissible hindsight.” Id. at 10.
We are persuaded by Appellants’ arguments. Figure 1 of Dlugos is
reproduced below:
Figure 1 depicts a system using two separately located emitter
scanners 34 and 36 to determine the linear measurements of a parcel, Pi.
Dlugos col. 4,11. 65—67. Figure 1 further depicts platform 12, on which
parcel Pi is placed, and adjacent walls 16 and 22. Dlugos col. 5,11. 9—12,
16—20. At their base, adjacent walls 16 and 22 have a calibrated reflective
FIG.I
32
10
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Application 13/622,737
strip 14 and 16. Dlugos col. 5,11. 21—24. Where walls 16 and 22 meet to
form a right angle is another calibrated reflective strip 18. Measurement of
parcel Pi is accomplished by emitting a beam of light from each of emitter
scanners 34 and 36. Dlugos col. 5,11. 40-42. Light that is reflected back to
each of the emitter scanners from the calibrated markings of the calibrated
reflective strips 14,18, and 20 is counted and used to calculate the parcel
dimensions. Dlugos col. 5,11. 42—55.
The Examiner finds sensor 34 in Figure 1 of Dlugos is located “below
the vertex of the package” and emitter scanner 36 “can be moved vertically
up and down so that it can be moved to be placed below vertex.” Ans. 10;
Non-Final Act. 4. However, the Examiner states “Dlugos’ disclosure is
silent about the location of emitter scanner with respect to platform 12” so
“[t]here is no requirement that emitter scanner 34 has to be placed above the
platform.” Ans. 10—11.
We do not agree with the Examiner that emitter scanner 34 and/or
emitter scanner 36 are below the vertex of walls 16 and 22 and platform 12.
While it is true that Dlugos does not explicitly describe the position of the
emitter scanners 34 and 36 with respect to platform 12, Dlugos does describe
that “emitter scanner 34 is mounted at a height that will allow emitter
scanner 34 to emit a beam of light toward the calibrated reflective strips 14
and 20 and to receive a reflection back from the beam.” Dlugos col. 5,11.
61—64. With respect to emitter scanner 36, Dlugos describes “the sensor
would be placed high enough above the flat surface of the measurement field
so as to detect all of the visible calibration marks on the two axis of
measurement.” Dlugos col. 4,11. 31—34; see also Dlugos col. 4,11. 55—60
(“[t]he scanner is . . . further positioned at a height where it can scan and
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Application 13/622,737
count the visible lines that will constitute the length and width of the
package dimensions as well as rotate upward to calculate the height of the
package”). Figure 1 depicts both emitter scanners 34 and 36 on a surface
and emitting beams of light toward the calibrated reflective strips 14,18, and
20. Presumably, subsystem 10 is also on a surface, and not floating in the
air. The Examiner does not explain, nor do we discern, how emitter scanner
34 or emitter scanner 36 can be placed below the vertex of walls 16 and 22
and platform 12, and still be able to detect the visible calibration marks on
the appropriate axis of measurement.
However, even assuming emitter scanners 34 and 36 are below the
vertex of walls 16 and 22 and platform 12, the Examiner proposes modifying
Dlugos by tilting the supporting structure so the weight of parcel Pi is
supported by walls 16 and 22 and platform 12, as opposed to just platform
12. Ans. 10. As stated in KSR Inti. Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007), “‘[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness”’ (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
We see no difference between conclusory statements that this
modification is a “minor modification” (Non-Final Act. 3—4) or a “minor
improvement” (Ans. 10) and stating that these changes are “common sense,”
which, without more, is insufficient to support an obviousness analysis. See
In Re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017) (“obviousness findings
‘grounded in ‘common sense’ must contain explicit and clear reasoning’”)
(citation omitted); Mintz v. Dietz & Watson, 679 F.3d 1372, 1377 (Fed. Cir.
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Application 13/622,737
2012) (“The mere recitation of the words ‘common sense’ without any
support adds nothing to the obviousness equation.”).
Given the proposed modification, as well as the thin reasoning
proffered for the modification (“to facilitate parcel measurement,
identification, sorting and delivery” Ans. 3), we conclude that the Examiner
improperly used the claims of the instant application as a guide in
constructing a system. See Plantronics v. Aliph, Inc., 724 F.3d 1343, 1354
(Fed. Cir. 2013) (“Where, as here, the necessary reasoning is absent, we
cannot simply assume that ‘an ordinary artisan would be awakened to
modify prior art in such a way as to lead to an obviousness rejection.’ It is in
such circumstances, moreover, that it is especially important to guard against
the dangers of hindsight bias.” (citation omitted)); see also W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1552 (Fed. Cir. 1983) (“The
result is that the claims were used as a frame, and individual, naked parts of
separate prior art references were employed as a mosaic to recreate a
facsimile of the claimed invention. At no point did the district court, nor
does Garlock, explain why that mosaic would have been obvious to one
skilled in the art. . . .”). An analysis infected with impermissible hindsight
cannot form the basis of an obviousness conclusion. See KSR, 550 U.S. at
421 (“A factfinder should be aware, of course, of the distortion caused by
hindsight bias and must be cautious of arguments reliant upon ex post
reasoning.”)
Accordingly, the Examiner’s findings lack adequate reasoning, with
rational underpinning, to show sufficiently that a person of ordinary skill in
the art would have had reason to combine the teachings of Dlugos and Prutu
and then to make the further required modification of tilting the supporting
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Application 13/622,737
structure, which accounts for each limitation in the claim. Because we agree
with at least one argument advanced by Appellants, we need not address
Appellants’ remaining arguments.
We, therefore, do not sustain the Examiner’s rejection of independent
claim I and dependent claims 2—13.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—13 is
reversed.
REVERSED
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