iRobot Corporation

Patent Trials and Appeals Board

Dec 23, 2020

2020005566 (P.T.A.B. Dec. 23, 2020)

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.
15/614,844 06/06/2017 Jacob C. Cheuvront 09945-0282001 8597
108858 7590 12/23/2020
Fish & Richardson PC (iROBOT)
P.O. Box 1022
Minneapolis, MN 55440-1022
EXAMINER
KISWANTO, NICHOLAS
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
12/23/2020 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):
patdoctc@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JACOB C. CHEUVRONT,
CHRISTOPHER V. JONES, and MICHAEL J. DOOLEY
____________

Appeal 2020-005566
Application 15/614,844
Technology Center 3600
____________

Before HUBERT C. LORIN, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–22 and 24–26, which are all the pending claims in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies iRobot Corporation as the real party in
interest. Appeal Br. 3.
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THE INVENTION
The claimed subject matter relates to “systems and methods for
controlling autonomous mobile robots, in particular, for controlling
autonomous mobile robots using audio media devices.” (Spec., 1:6–7).
Claim 1 is illustrative, and is reproduced below:
1. A method for controlling one or more operations of an
autonomous mobile robot maneuverable within a home, the
method comprising:
establishing wireless communication between an
autonomous mobile robot and a remote computing system, the
autonomous mobile robot being remote from an audio media
device stationed within the home, the audio media device being
capable of receiving and emitting audio, and the remote
computing system being configured to associate identification
data of the autonomous mobile robot with identification data of
the audio media device;
in response to receiving a wireless command signal from
the remote computing system, initiating one or more operations
of the autonomous mobile robot, the wireless command signal
corresponding to an audible user command received by the
audio media device; and
causing the audio media device to emit audible
instructions indicating a sequence of user actions for addressing
a basis of an error associated with the autonomous mobile robot
in response to detection of the error.
Appeal Br. 16 (Claims Appendix).
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Graham US 6,654,720 B1 Nov. 25, 2003
Dubrovsky US 9,008,835 B2 Apr. 14, 2015
Lee EP 2,938,022 A1 Oct. 28, 2015

THE REJECTIONS2
The following rejections are before us for review:
1. Claims 1–22 and 24–26 are rejected under 35 U.S.C. § 112(b) as
being indefinite.
2. Claims 1, 2, 4–6, 8, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee and Graham.
3. Claims 3, 7, 9–11, 13–22, and 24–26 is rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee, Graham, and Dubrovsky.

ANALYSIS
The rejection of claims 1–22 and 24–26 under 35 U.S.C. § 112(b) as being
indefinite.
According to the Examiner, independent claims 1 and 12 fail to
provide sufficient antecedent basis for the phrase “detection of the error.”
Non–final Act. 2.
Appellant disagrees, noting, inter alia, that “both independent claims 1
and 12 reciting ‘an error associated with the autonomous mobile robot.’”
Appeal Br. 9.

2 The rejections under 35 U.S.C. § 112, first paragraph, are withdrawn.
Ans. 23–24.
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The Examiner counters that “is no previous recitation of ‘detection of
the error.’” Ans. 4. “[T]he ‘error’ itself is not the issue, it is the ‘detection’ of
said ‘error’.” Id.
We have reviewed the record and find that that there is implicit basis
for “detection of the error”; that is, detection of “an error associated with the
autonomous mobile robot,” as claimed.
One of ordinary skill in the art reading the claims would understand
that, “in response to detection” of “an error associated with the autonomous
mobile robot,” the method “caus[es] the audio media device to emit audible
instructions indicating a sequence of user actions for addressing a basis” of
the error. One would understand that the “causing” step implicitly requires
“detecting of the error.” Otherwise, the “causing” step will not occur.
For the foregoing reasons, we find there is antecedent basis for
“detecting of the error” by implication. See Slimfold Mfg. Co. v. Kinkead
Indus., Inc., 810 F.2d 1113, 1116 (Fed. Cir. 1987).
We are cognizant that while, as here, antecedent basis may be present
by implication, where a lack of antecedent basis can cause a claim to be
amenable to more than one construction, it is proper to reject the claim under
§112(b), thus requiring applicant to more precisely define the invention.
(“Lack of an antecedent basis in a claim could render it invalid under
35 U.S.C. § 112,” In re Altenpohl, 550 F.2d 1151, 1156 (CCPA 1974).)
Doing so serves a public notice function, ensuring that the patent
specification adequately notifies the public of the scope of the patentee’s
right to exclude. See Honeywell Int'l, Inc. v. Int'l Trade Comm’n, 341 F.3d
1332, 1338 (Fed. Cir. 2003). However, a claim satisfies the definiteness
requirement of § 112 “[i]f one skilled in the art would understand the bounds
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of the claim when read in light of the specification.” Exxon Research &
Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). That
appears to be the case here. The scope of the claims appears to be reasonably
ascertainable. See Energizer Holdings Inc. v. United States ITC, 435 F.3d
1366, 1370-71 (Fed. Cir. 2006) (“In Bose Corp. v. JBL, Inc., 274 F.3d 1354,
1359 (Fed. Cir. 2001) the court held that despite the absence of explicit
antecedent basis, ‘If the scope of a claim would be reasonably ascertainable
by those skilled in the art, then the claim is not indefinite.’”)
The rejection is not sustained.

The rejection of claims 1, 2, 4–6, 8, and 12 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee and Graham.
Independent claims 1 and 12 include the claim limitations “causing
the audio media device to emit audible instructions indicating a sequence of
user actions for addressing a basis of an error associated with the
autonomous mobile robot in response to detection of the error” and
“emitting the audible signal comprises emitting audible instructions
indicating a sequence of user actions for addressing a basis of an error
associated with the autonomous mobile robot in response to detection of the
error,” respectively.
The Examiner finds that Lee discloses all that is claimed but for said
claim limitations, for which Graham is relied upon. See Non–final Rej. 4:
“Lee is silent as to the specifics of wherein emitting the audible signal
comprises emitting audible instructions indicating a sequence of user actions
for addressing a basis of an error associated with the autonomous mobile
robot in response to detection of the error.” That Lee does not disclose said
claim limitations is not in dispute. See Appeal Br. 10–11.
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Regarding Graham, the Examiner states the following: “Graham is
directed to a home audio media device and teaches an error response that
comprises emitting audible instructions indicating a sequence of user actions
for addressing a basis of an error in response to detection of the error
(col[.] 5, line[s] 46–55).” Non–final Rej. 4.
According to the Examiner:
It would have been obvious to one of ordinary skill in the art to
provide Lee with Graham in order to emit an audible sequence
of instructions in response to detection of an error since it
leverages the features of a home audio media device and uses
the teachings in a known manner that does not produce any
unexpected results. Furthermore, the combination does not
require undue experimentation since it merely requires
programming.
Id.
Appellant disagrees, inter alia, that “Graham [does not] describe
emitting audible instructions for user actions to address [an] error.” Appeal
Br. 12.
We have reviewed the record and find that it weighs in favor of the
Appellant’s position.
We reproduce column 5, lines 45–62:
The human then speaks the command “toaster begin”
(action 610). The analog signal at the microphone is converted
to a digital signal and sent to the speech recognition system
(action 612). The speech recognition system identifies the
device “toaster” but fails to recognize the operation “begin”
(action 614). Since the operation was not recognized, a help
routine for the object toaster is sent to the speech generation
system (action 616). This message is converted from digital to
analog and sent to the speaker (action 618). The human user
listens to these instructions (action 620).
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The human now knows the proper command and speaks
“toaster pop down” (action 622). This analog signal is digitized
(action 624) and all three words are recognized by the speech
recognition system (action 626). This caused the “popDown( )”
method invocation to be sent to the toaster (action 628). Action
628 corresponds to the second line of [Java Speech Markup
Language] to method invocation pairs shown in FIG. 5.
This passage describes a speech recognition system detecting an
unrecognized command (e.g., “begin”) spoken by a human. This causes, in
part, a help routine to be sent to the speech recognition system which sends
it to a speaker for the human to listen to. In this regard, Appellant’s
characterization of what this passage discloses is correct. See Appeal Br. 11–
12.
The process the passage describes appears to be similar to what is
claimed; that is, the speech recognition system “caus[es] [the speech
recognition system via a speaker] to emit audible instructions indicating a
sequence of user actions [i.e., a help routine] for addressing a basis of an
error [i.e., a failure to recognize the spoken command “begin”] associated
with [Graham’s speech recognition system] in response to detection of the
error” (claim 1).
A difference between what Graham discloses in said passage and what
is claimed is that, as Appellant first argues, the claim limitation at issue
involves an error with a “robot,” not a speech recognition system. See
Appeal Br. 12 (“Graham is altogether silent on an autonomous mobile
robot.”)
That difference alone is insufficient to render the claimed subject
matter unobvious over the cited prior art combination. It is Lee, not Graham,
which Examiner cites as disclosing the robot. As Appellant recognizes,
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“Graham’s ‘invention allows control of devices through voice commands
where the command and control hardware and software are shared amongst
the individual devices.’ (Graham, col. 3, 11. 20–22.)” Appeal Br. 11. Lee,
too, involves controlling devices, including a robot. It may have been
obvious to one of ordinary skill in the art to incorporate the error detection
and resolution technique Graham discloses, albeit in the context of a speech
recognition system, in Lee and thereby arrive at the claimed method. See
KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)) (“if a technique
has been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill. Sakraida and Anderson’s–Black Rock are illustrative—a court must
ask whether the improvement is more than the predictable use of prior art
elements according to their established functions.”) The Examiner makes
this point cogently in the Answer. See Ans. 4–6.
The difficulty here is that Graham’s error detection and resolution
technique concerns an error for the same device that will emit audible
instructions for addressing the error. As Appellant argues, “Graham teaches
a speech recognition system that emits audible instructions for addressing a
basis of an error associated with itself, not of any device.” Reply Br. 7. This
is an important distinction because the claimed error detection and resolution
technique concerns a different device, a robot. The claimed technique causes
“the audio media device,” not the robot, “to emit audible instructions
indicating a sequence of user actions for addressing a basis of an error
associated with the autonomous mobile robot [a different device] in response
to detection of the error.” Graham is different. Graham’s technique causes a
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speech recognition system “to emit audible instructions indicating a
sequence of user actions for addressing a basis of an error associated with”
the speech recognition system [same device] “in response to detection of the
error.”
Accordingly, it is not enough simply to incorporate Graham’s
technique into Lee and thereby reach the claimed method. To reach the
claimed method, one would have first to modify Graham to cause the speech
recognition system “to emit audible instructions indicating a sequence of
user actions for addressing a basis of an error associated with” a different
device “in response to detection of the error.”
The Examiner argues that:
Graham provides a clear teaching providing for errors to be
tailored to a particular device (“can be adapted to a wide variety
of help scenarios”) so that one of ordinary skill would have
found it obvious to substitute Lee’s robot for Graham’s
examples of toaster or navigation system since the claimed
invention is not the discovery of new errors but the audible
guidance of known errors through an audio media device. …
Furthermore, the result of said substitution would have been
entirely predictable such that instead of causing the audio media
device to emit audible instructions indicating a sequence of user
actions for addressing a basis of an error associated with a
toaster in response to detection of the error, the method would
now cause the audio media device to emit audible instructions
indicating a sequence of user action for addressing a basis of an
error associated with an autonomous mobile robot in response
to detection of the error.
Ans. 6–7.
As we understand it, the Examiner’s position is that one can reach the
claimed method by substituting Lee’s robot for, for example, Graham’s
examples of a toaster or navigation system. The problem is that the error
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detected and resolved in Graham is not with other devices – such as a toaster
or navigation system. It is with the speech recognition system.
Notwithstanding that the speech recognition system is used to operate, for
examples, a toaster and navigation system, the speech recognition system is
not detecting an error with them but with the inability of the speech
recognition system to recognize a command voiced by a human. The speech
recognition system transmits audible instructions indicating a sequence of
user actions for addressing its own inability to recognize the command. By
contrast, the claimed method causes an audio media device to emit audible
instructions indicating a sequence of user actions for addressing an error
associated with a different device.
Accordingly, column 5, lines 45–62, of Graham does not disclose the
claim limitations “causing the audio media device to emit audible
instructions indicating a sequence of user actions for addressing a basis of an
error associated with the autonomous mobile robot in response to detection
of the error” and “emitting the audible signal comprises emitting audible
instructions indicating a sequence of user actions for addressing a basis of an
error associated with the autonomous mobile robot in response to detection
of the error,” in independent claims 1 and 12, respectively, as the Examiner
has contended.
As a result, a prima facie case of obviousness has not been made out
in the first instance. The rejection is not sustained.

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The rejection of claims 3, 7, 9–11, 13–22, and 24–26 is rejected under
35 U.S.C. § 103(a) as unpatentable over Lee, Graham, and Dubrovsky.
Claims 3, 7, 9–11 and claims 13–22, 24–26, depend from independent
claims 1 and 12. The Examiner does not rely on the additional reference
(Dubrovsky) in any way that would cure the deficiency in the rejection of
independent claims 1 and 12 discussed above. Thus, the rejection of these
claims is not sustained for the reasons given above for not sustaining the
rejection of independent claims 1 and 12 from which these claims depend.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–22, 24–
26
112(b) Indefiniteness 1–22, 24–
26
1, 2, 4–6,
8, 12
103(a) Lee, Graham 1, 2, 4–6, 8,
12
3, 7, 9–11,
13–22,
24–26
103(a) Lee, Graham,
Dubrovsky
3, 7, 9–11,
13–22, 24–
26
Overall
Outcome
1–22, 24–
26

REVERSED