Ex Parte Van Stevendaal et al

Patent Trial and Appeal Board

Nov 20, 2017

13575828 (P.T.A.B. Nov. 20, 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.
13/575,828 07/27/2012 Udo Van Stevendaal 2010P00117WOUS 2754
24737 7590 11/22/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue KINNARD, LISA M
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
11/22/2017 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte UDO VAN STEVENDALL and MICHAEL GRASS
Appeal 2015-007895
Application 13/575,828
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Udo Van Stevendaal and Michael Grass (“Appellants”)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—13,
which are all the pending claims. Appeal Br. 2. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and ENTER A NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is KONINKLIJKE
PHILIPS N V of EINDHOVEN, NETHERLANDS. Appeal Br. 2.
Appeal 2015-007895
Application 13/575,828
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to an object localization
apparatus, object localization method[,] and object localization computer
program for localizing an object having markers,” as well as to navigation
systems and methods that include such object localization. Spec., p. 1,
11. 2—6. Claim 1, reproduced below with emphasis added, is illustrative of
the subject matter on appeal.
1. An object localization apparatus for localizing an object
having markers, the object localization apparatus (1)
comprising:
a projection image providing unit (2) providing a
projection image (3) being generated by projecting the
object (4) with the markers (5) in a projection plane (6),
a projection image recognition unit (34)
recognizing the projected markers (10) and the projected
object (11) in the projection image (3),
an object function providing unit (7) providing an
object function (8) along x-z positions (9, 20...25), wherein the
object function (8) represents the object (4) and the x-z
positions (9, 20...25) are defined by pairs of an x position and a
z position, wherein an x position is a position of a recognized
projected marker (10) along a fictive line (41) on the recognized
projected object (11) in the projection plane (6) and wherein a
z position defines a position of a marker in a direction (40)
being outside the projection plane (6),
an object function adaptation unit (12) modifying
the object function (8) such that distances between the x-z
positions (9, 20...25) along the object function (8) are adapted
to distances between the markers (5) of the object (4) by
varying the z positions,
a position determination unit (13) determining the
position of the object (4) based on the adapted object function
and the positions of the recognized projected markers in the
projection plane.
2
Appeal 2015-007895
Application 13/575,828
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Yasui
Graumann
Smith
Weese
Jank
US 5,922,036
US 2003/0139663 A1
US 2007/0271319 A1
US 2009/0216111 A1
WO 2010/012441 A1
July 13, 1999
July 24, 2003
Nov. 22, 2007
Aug. 27, 2009
Feb. 4, 2010
REJECTIONS
The following rejections are before us for review:2
I. Claims 1 and 5 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 3—6.
II. Claims 1—6 and 8—13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jank, Yasui, Weese, and Graumann.
Id. at 6—14.
III. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jank, Yasui, Weese, Graumann, and Smith.
Id. at 14.
2 This application includes an objection to the drawings for failing to
show structural details essential for a proper understanding of the invention
as described (Final Act. 2; see Ans. 26), which Appellants present argument
against (Appeal Br. 14). However, objections unrelated to a corresponding
rejection (e.g., under 35 U.S.C. § 112, first paragraph) are petitionable
matters, not appealable matters, and are therefore not within the jurisdiction
of the Board. See MPEP §§ 1002.02(c)(3); 1201; see also In re Mindick,
371 F.2d 892, 894 (CCPA 1967). As such, the drawing objection is not
before us for review as part of the instant appeal.
3
Appeal 2015-007895
Application 13/575,828
IV. Claims 1—11 stand rejected under 35U.S.C. § 101 as being
directed to patent-ineligible subject matter.3 Ans. 2—15.
ANALYSIS
Rejection I—Indefiniteness of Claims
The Examiner rejects claims 1 and 5 under 35U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Final Act. 3—6. We focus our analysis herein on independent claim 1, and
note that the rest of the claims include similar recitations.
As the Examiner observes, the claim recites various iterations of a
generic placeholder, “unit,” that is identified only with the function to be
accomplished by the unit (e.g., a providing unit that provides, a recognition
unit that recognizes, a determination unit that determines, etc.) without
reciting sufficient structure to accomplish such functions. See Final
Act. 3—5. Thus, the Examiner interprets the claim recitations under
35 U.S.C. § 112, sixth paragraph. See id. Based on such an interpretation,
the Examiner explains that the claim is indefinite because Appellants do not
identify any corresponding structure described in the Specification, such as a
specifically programmed computer, for determining the scope of the claim.
See id. at 4—5.
In response, Appellants contend that the claim recitations should not
invoke interpretation under 35 U.S.C. § 112, sixth paragraph, but instead
3 This rejection was introduced by the Examiner as a New Ground of
Rejection in the Examiner’s Answer (see Ans. 2—15) and was responded to
by Appellants in the Reply Brief (see Reply Br. 7—9).
4
Appeal 2015-007895
Application 13/575,828
would be understood by persons of ordinary skill in the art to encompass
“either dedicated hardware or a computer executing program code” to
perform the functions. Appeal Br. 12—14; see also Reply Br. 12—14 (same).
This response does not clarify the scope of the claim. As the Examiner
explains, “a computer performs all of these functions,” but Appellants do not
identify any disclosure of how such a computer must be structured or
configured (for example, by specific programming) in order to accomplish
the recited functions. Ans. 26; see also Aristocrat Techs. Australia Pty Ltd.
v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (to claim a means,
or “unit,” for performing a specific computer-implemented function and then
to disclose only a general purpose computer as the structure designed to
perform that function amounts to improper pure functional claiming).
Thus, regardless of whether the claim recitations invoke construction
under 35U.S.C. § 112, sixth paragraph, we agree with the Examiner’s
determination that the claim is indefinite because the purely functional
recitations result in a claim with indeterminate scope. Accordingly, we
sustain the Examiner’s reasonable rejection of claim 1 under 35 U.S.C.
§112, second paragraph, as being indefinite.4 Because our analysis includes
4 We note that Appellants and the Examiner may also wish to consider
whether these purely functional recitations are sufficiently enabled by the
disclosure, particularly given Appellants’ position that the claim recitations
are not intended to invoke interpretation under 35 U.S.C. § 112, sixth
paragraph. See, e.g., Fig. 1 (depicting schematic blocks representing the
recited “units”); see also Ans. 26 (the Examiner noting that “a series of
connected and numbered rectangles provides no information regarding the
content of the invention”) (emphasis added). As the Patent Trial and Appeal
Board is a review body, rather than a place of initial examination, we decline
to make a determination regarding enablement of the claims as presently
recited; rather, we leave it to the Examiner to determine the appropriateness
5
Appeal 2015-007895
Application 13/575,828
reasoning that may differ from that presented by the Examiner, we designate
our affirmance of this rejection as a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Further, because this pure functional claiming—and
the resulting inability to reasonably determine claim scope—similarly
pervades the rest of the claims, we also enter a new ground of rejection for
claims 2—13 pursuant to 37 C.F.R. § 41.50(b). Claims 1—13 are rejected
under 35 U.S.C. § 112, second paragraph, as being indefinite.
The essence of the requirement under 35 U.S.C. § 112, second
paragraph, that the claims must be definite, is that the language of the claims
must provide clarity to those skilled in the art regarding the scope of the
subject matter which the claims encompass. See In re Hammack, 427 F.2d
1378 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second
paragraph, 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).
Of course, it is not categorically indefinite to include functional
limitations in an apparatus claim, but the reliance on functional language in a
claim may fail “to provide a clear-cut indication of the scope of the subject
matter embraced by the claim,” and thus be indefinite. In re Swinehart, 439
F.2d 210, 213 (CCPA 1971). Such is the case here. When a claim merely
recites a function to be achieved by a schematic block—here, for example, a
position determination unit (box 13) that determines (perhaps by some
of any further course of action should there be further prosecution of this
application. See Ex Parte Frye, 94 USPQ2d 1072, 1075—77 (BPAI 2010)
(precedential).
6
Appeal 2015-007895
Application 13/575,828
undisclosed and unspecified algorithm) the position of an object—the
boundaries of the claim scope may be unclear. See Halliburton Energy
Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that
the Supreme Court has explained that a vice of functional claiming occurs
“when the inventor is painstaking when he recites what has already been
seen, and then uses conveniently functional language at the exact point of
novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S.
364, 371 (1938)).
We share the Examiner’s concerns for determining requisite
boundaries on the scope of the functional recitations of the claims. See
Swinehart, 439 F.2d at 213; Halliburton, 514 F.3d at 1255. As discussed
above, Appellants’ contention that the functional recitations involve “either
dedicated hardware or a computer executing program code” to perform the
functions (see Appeal Br. 12—14; Reply Br. 12—14) is insufficient to identify
any algorithm that may transform any general purpose computer (see
Ans. 26) to a suitable structure for accomplishing the recited functions. See
Aristocrat, 521 F.3d at 1333.
To the extent that Appellants endeavor to rely on some structure
implied by these purely functional recitations (for example, to distinguish
over the cited art and/or to establish eligibility of the subject matter), it is
only fair—both to the Examiner and to the public—that Appellants clearly
delineate, either by express language in the claims themselves or by citation
to evidence in the record, the scope encompassed by the claims. Appellants
have not directed us to any such delineation. Unless and until one reading
the claims is able to ascertain with reasonable certainty what the limits of the
asserted “dedicated hardware or software” (Appeal Br. 14) may be, the
7
Appeal 2015-007895
Application 13/575,828
scope of the claims is unclear because it lacks sufficient precision to permit
one endeavoring to practice the invention to adequately determine the metes
and bounds thereof.
In light of the above, we conclude that claims 1—13 are indefinite
under 35U.S.C. § 112, second paragraph, for failing to particularly point out
and distinctly claim the subject matter which Appellants regard as the
invention.
Rejections II IV Art Rejections and Eligibility of Claims
We do not sustain the Examiner’s rejections of the claims under
35 U.S.C. §§ 103(a) or 101. For the reasons explained in detail above, the
claims are indefinite. Before a proper appellate review of these rejections
can be performed, the subject matter encompassed by the claims on appeal
must be reasonably understood without resort to speculation. Therefore,
since the claims fail to satisfy the requirements of the second paragraph of
35 U.S.C. § 112, we are constrained to reverse, pro forma, the prior art and
subject matter eligibility rejections because they necessarily are based on
speculative assumptions as to the scope of the claims. See In re Steele, 305
F.2d 859, 862—63 (CCPA 1962) (holding that the Board erred in affirming a
rejection of indefinite claims because the rejection was based on speculative
assumptions as to the meaning of the claims).
We emphasize, however, that our decision in this regard is based
solely on the indefmiteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied or the eligibility
analysis provided in support of the rejections. For example, we note that a
purely functional recitation, unbounded by structure, is often akin to an
8
Appeal 2015-007895
Application 13/575,828
abstract idea. Appellants’ general assertion that the claims are related to a
“particular practical application” or “real-world use,” rather than to a
preemption of every use of an object function, does not appear to sufficiently
constrain the abstraction to any concrete specificity. Reply Br. 7—9. Here,
as discussed above, it is the particularity of Appellants’ asserted “particular
practical application” that is unclear. Id. at 7.
In short, Appellants do not apprise us of error in the Examiner’s
conclusion that the claims, as presently recited, are directed to an abstract
idea.
DECISION
We AFFIRM the Examiner’s decision rejecting claim 1 under
35 U.S.C. § 112, second paragraph, as being indefinite, and we designate our
affirmance as a NEW GROUND OF REJECTION, as set forth above.
We ENTER A NEW GROUND OF REJECTION of claims 2-13
under 35 U.S.C. § 112, second paragraph, as being indefinite, as set forth
above.
We REVERSE, pro forma, the Examiner’s decision rejecting
claims 1—6 and 8—13 under 35 U.S.C. § 103(a) as being unpatentable over
Jank, Yasui, Weese, and Graumann.
We REVERSE, pro forma, the Examiner’s decision rejecting claim 7
under 35 U.S.C. § 103(a) as being unpatentable over Jank, Yasui, Weese,
Graumann, and Smith.
We REVERSE, pro forma, the Examiner’s decision rejecting
claims 1—11 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter.
9
Appeal 2015-007895
Application 13/575,828
FINALITY OF DECISION
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 that “[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 Appellants, 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 prosecution 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. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R, $ 41,501b)
10