Ex Parte Benjamin

Board of Patent Appeals and Interferences

Jul 29, 2009

10911765 (B.P.A.I. Jul. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL R. BENJAMIN
____________________

Appeal 2009-003310
Application 10/911,765
Technology Center 3600
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Decided:1 July 29, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JOHN C. KERINS and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appeal 2009-003310
Application 10/911,765

2
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
4, 6-9 and 11-20. Claims 5 and 10 have been cancelled. App. Br 2. We
have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a method for autonomously controlling a
vehicle. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for autonomously controlling a vehicle
comprising:
establishing decision variables for maneuvering the
vehicle;
establishing behavior functions associated with a
behavior of the vehicle including at least two of safest path,
shortest path, quickest path, boldest path, and steadiest path as
a function of at least one of the established decision variables,
each behavior function giving a score indicating the desirability
of engaging in the associated behavior wherein said established
behavior functions are piecewise defined functions, each
behavior function being dependent on at least one of the
established decision variables, said behavior function being
based on an underlying expression, each behavior function
having a plurality of pieces, each piece relatable to an interior
function having a piece maximum value, each behavior
function having only one piece for each combination of
decision variable values;
establishing weights of the established behavior functions
to give weighted behavior functions;
solving a summation of the weighted behavior functions
while the vehicle is operating to determine the values of the
decision variables giving the highest summation; and
guiding the vehicle in accordance with the determined
decision variable values (emphasis supplied).

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The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Takagi US 6,650,965 B2 Nov. 18, 2003
Solomon US 2004/0162638 A1 Aug. 19, 2004

Rosenblatt, DAMN: A Distributed Architecture for Mobile
Navigation, Carnegie Mellon University Robotics Institute Technical Report
CMU-RI-TR-97-01, 1997 (hereinafter “Rosenblatt DAMN”).
Riekki, Reactive Task Execution of a Mobile Robot, Dissertation,
University of Oulu, Finland, 1999.
Rosenblatt, Maximizing Expected Utility for Behaviour Arbitration,
Australian Joint Conference on Artificial Intelligence (1999), pp 96-108
(hereinafter “Rosenblatt”).
Benjamin, Underwater Vehicle Control: Minimum Requirements for a
Robust Decision Space, Command & Control Research & Technology
Symposium June 2000.

Claims 1, 3, 4 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Benjamin and Solomon. Ans. 3-5.
Claims 1, 3, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblatt DAMN and Solomon. Ans. 5-8.
Claims 4, 7-9, 11, 15, 16, 18, and 19 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rosenblatt DAMN, Solomon and
Riekki. Ans. 8-11.
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Claims 17 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblatt DAMN, Solomon, Riekki and Rosenblatt.
Ans. 11-12.
Claims 2 and 12-14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rosenblatt DAMN, Solomon, Riekki and Takagi. Ans.
12-13.

ISSUE
Appellant argues that the Examiner improperly relied upon Solomon
in rejecting claims 1, 3, 4 and 7-9 as being unpatentable over Benjamin and
Solomon (Ans. 4-5) because Solomon does not teach the claimed step of
“establishing behavior functions associated with a behavior of the vehicle
including at least two of safest path, shortest path, quickest path, boldest
path, and steadiest path as a function of at least one of the established
decision variables” as required by independent claims 1 and 8.
Appellant repeats the above argument regarding the Solomon
reference in addressing the rejection of claims 1, 3 and 6 as being
unpatentable over Rosenblatt DAMN and Solomon. App. Br. 13; Ans. 7.
Appellant again repeats this argument in addressing the rejection of claims
4, 7-9, 11, 15, 16, 18, and 19 as being unpatentable over Rosenblatt DAMN,
Solomon, and Reikki. App. Br. 15.
In light of these contentions we must determine whether the Appellant
has established that the Examiner erred in relying upon Solomon to conclude
that the subject matter of claims 1 and 8 would have been obvious to one of
ordinary skill in the art.

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FINDINGS OF FACT
1. Solomon discloses a system of self-organizing mobile robotic agents
(MRAs) that cooperate, learn and interact with the environment. See
Abstract. Solomon’s system may be used in a variety of applications
such as underwater surveillance, reconnaissance, search and rescue, and
demining. Para [0144]-[0145].
2. Solomon discloses that the MRAs may have an attitude bias based upon a
normal, passive or aggressive behavior. A passive behavioral bias will
cause the MRA to act with slower judgment but consider more
information, while an aggressive behavioral bias will cause the MRA to
act with faster judgment but less information. Para [0322]; fig. 15.
3. Solomon discloses that each MRA simulates scenarios in order to detect
the best fitting solution. A competition is established between the
potential solutions and weights are attached to each solution option
allowing the solution options to be ranked. Para [0374]; fig. 60.
4. Where the MRA does not interact with the environment a shortest path
option is set as a default. Para [0375]; fig. 61.
5. Solomon additionally discloses that the MRA have the ability to avoid
obstacles. Paras. [0403]-[0405]; fig. 85.
6. Benjamin and Rosenblatt DAMN each disclose systems for the
automated control of vehicles.

PRINCIPLES OF LAW
35 U.S.C. § 103 forbids issuance of a patent when the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 406-407.
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections 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.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
In determining the differences between the prior art and the claims,
the question under 35 U.S.C. § 103 is not whether the differences themselves
would have been obvious, but whether the claimed invention as a whole
would have been obvious. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530
(Fed. Cir. 1983). There is no legally recognizable essential gist or heart of
the invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540,
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1548 (Fed.Cir.1983), cert. denied, 469 U.S. 851 (1984). Obviousness may
not be established using hindsight or in view of the teachings or suggestions
of the inventor. Id. at 1551, 1553.

ANALYSIS
The Examiner relies upon Solomon to teach the step of establishing
behavior functions associated with a behavior of the vehicle including at
least two of safest path, shortest path, quickest path, boldest path, and
steadiest path as a function of at least one of the established decision
variables required by independent claims 1 and 8. Ans. 5, 7. While
Solomon may disclose elements that, when viewed in isolation, may be
interpreted as behavior functions (See e.g., Fact 2), a boldest path (See e.g.,
Fact 3), a shortest path (See e.g., Fact 3), or a safest path (See e.g., Fact 5),
Solomon, when read as a whole, does not provide any teaching that one of
ordinary skill in the art would have understood as applicable to Benjamin,
Rosenblatt DAMN, Reikki, or any combination thereof, that would have
rendered the subject matter of claim 1 or claim 8 obvious. App. Br.8-10.
Even assuming the Examiner’s reading of Solomon is reasonable, simply
teaching individual components of a claim is not sufficient to render obvious
the subject matter of that claim as whole. Solomon does not associate the
alleged paths to the alleged behavior functions nor provide any indication
that those elements are used in the manner claimed. Despite sharing similar
nomenclature, the elements of Solomon that the Examiner reads as the
claimed paths and behavior functions would not be interpreted by one of
ordinary skill in the art as the claimed paths and behavior functions when
reading Solomon as a whole. These elements also differ from those
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described in Benjamin and Rosenblatt DAMN. Reading the references as a
whole, one of ordinary skill in the art would therefore not recognize
Solomon’s teachings regarding those elements relied upon by the Examiner
as applicable to the methods described in Benjamin or Rosenblatt DAMN.
For these reasons we must conclude that the Examiner has not provided the
requisite factual support necessary to sustain a conclusion of obviousness.
Accordingly, the rejection of claims 1 and 8 as being unpatentable over
Benjamin and Solomon, the rejection of claim 1 as being unpatentable over
Rosenblatt DAMN and Solomon, and the rejection of claim 8 as being
unpatentable over Rosenblatt DAMN, Solomon, and Reikki, cannot be
sustained.

CONCLUSION OF LAW
On the record before us, Appellant has established that the Examiner
erred by rejecting claims 1 and 8 as being unpatentable over Benjamin and
Solomon, by rejecting claim 1 as being unpatentable over Rosenblatt DAMN
and Solomon, and by rejecting claim 8 as being unpatentable over
Rosenblatt DAMN, Solomon and Reikki. Neither Reikki, Takagi nor
Rosenblatt, as applied by the Examiner, cure the deficiencies of Benjamin,
Rosenblatt DAMN, and Solomon. Accordingly the rejections of dependent
claims 3, 4, 6, 7, 9 and 11-20 also cannot be sustained.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-4, 6-9
and 11-20 are reversed.

Appeal 2009-003310
Application 10/911,765

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REVERSED

LV

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