Ex Parte CutchinDownload PDFPatent Trial and Appeal BoardJan 31, 201813604077 (P.T.A.B. Jan. 31, 2018) Copy Citation 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. 13/604,077 09/05/2012 Steve Cutchin 821109-1060 7550 144099 7590 02/02/2018 Patent Portfolio Builders, PLLC P.O. Box 7999 Fredericksburg, VA 22404-7999 EXAMINER KARWAN, SIHAR A ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 02/02/2018 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): Mailroom@ppblaw.com eofficeaction @ appcoll.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVE CUTCHIN Appeal 2017-009783 Application 13/604,0771 Technology Center 2400 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1,10, 12-21, and 23-30, which are all of the claims pending in this application. Claims 2-9, 11, and 22 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellant, the real party in interest is King Abdullah University of Science and Technology. App. Br. 1. Appeal 2017-009783 Application 13/604,077 INVENTION Appellant’s claimed invention relates to “data processing and, more particularly, to processing three-dimensional stereoscopic data.” Spec. ^ 5. Claim 1 reads as follows, with the disputed limitations shown in italics: 1. A method, comprising the steps of: (a) accessing a program having a desired path through a physical area; (b) instructing a robotic maneuvering platform (RMP) to move to a start location on the desired path; (c) instructing a programmable camera controller (PCC) to execute capture of stereoscopic panoramic data at the start location; (d) receiving stereoscopic panoramic data from the start location; (e) deciding whether additional data-capture locations along the desired path exist', and (f) responsive to deciding that additional data-capture locations exist along the desired path'. (fl) determining a stereocomplexity (Sc) from the received stereoscopic panoramic data, the Sc being based at least in part upon a norm of a stereo-differential between stereo pairs of the stereoscopic panoramic data', (f2) determining a step size to a subsequent location on the desired path, the step size being a function of the determined Sc; (f3) determining the subsequent location on the desired path based on the determined step size; (f4) instructing the RMP to move to the determined subsequent location on the desired path; (f5) instructing the PCC to execute capture of stereoscopic panoramic data at the subsequent location; (f6) receiving stereoscopic panoramic data from the subsequent location; and (f7) repeating the process from step (e). 2 Appeal 2017-009783 Application 13/604,077 REJECTIONS2 Claims 1, 10, and 28 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 3—4. Claims 1, 10, 12-21, and 23-30 stand rejected under 35 U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility. Final Act. 4. Claims 1, 10, 12-21,3 and 23-30 stand rejected under 35 U.S.C. § 102(b) as anticipated by Lenser et al. (US 2008/0027591 Al, publ. Jan. 31, 2008) (“Lenser”). Final Act. 7. 2 In the event of further prosecution, we leave it to the Examiner to consider whether the limitation “(a) accessing a program having a desired path through a physical area” is indefinite under 35 U.S.C. § 112(b). See App. Br. 44 (emphasis added). When a claim term (i.e., what is “desired), “depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,” without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005) (finding “aesthetically pleasing” to be indefinite because the specification lacked any objective definition of the term). “[I]f a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim . . . indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); accord Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566 at *4 (PTAB 2017) (precedential). Although the Board is authorized to reject claims under 37 C.F.R. § 41.50(b), no inference should be drawn when the Board elects not to do so. See Manual of Patent Examining Procedure (MPEP) §1213.02. 3 In the rejection heading, the Examiner includes cancelled claim 22. Final Act. 7. For clarity, we omit claim 22 from our listing of rejections. 3 Appeal 2017-009783 Application 13/604,077 ANALYSIS Rejection of Claims 1, 10, and 28 under 35 U.S.C. § 112 In rejecting claims 1 and 10 as indefinite, the Examiner concluded the limitation “based at least in part,” common to both claims, is a relative term that is not defined in the Specification. Final Act. 3—4. The Examiner found that one of ordinary skill in the art would not be reasonably apprised of the scope of the claims. Id. Appellant contends the Examiner erred because one of ordinary skill in the art would have understood that the determination of the stereocomplexity (Sc) is “based at a minimum” upon a stereo-differential between stereo pairs of the stereoscopic panoramic data. App. Br. 4-5. Appellant’s arguments are persuasive. We apply the approach for assessing indefmiteness approved by the Federal Circuit in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). In re McAward, Appeal 2015- 006416, 2017 WE 3669566, *5 (PTAB Aug. 25, 2017) (precedential). A claim is indefinite when it contains words or phrases whose meaning is unclear. Packard, 751 F.3d at 1310, 1314. Claims are required to be cast in clear, as opposed to ambiguous, vague, or indefinite terms. Id. at 1313; see also MPEP § 2173.02(1). Here, the Examiner has not made findings showing that what is being claimed would not have been clear to a skilled artisan, but rather summarily concludes “[i]t is unclear what part or how much of the stereo-differential would be used to base the stereocomplexity.” Final Act. 4. As Appellant points out, the plain and ordinary meaning of “based at least in part,” when read in light of claims 1 and 10 as a whole, would allow a person of ordinary skill in the art to understand that the determination of the stereocomplexity (Sc) is based at a minimum upon a 4 Appeal 2017-009783 Application 13/604,077 stereo-differential between stereo pairs of the stereoscopic panoramic data. See App. Br. 4-5. Because claims 1 and 10 are cast in clear terms, we reverse the Examiner’s rejection of these claims under 35 U.S.C. § 112, second paragraph. The Examiner also concluded the term “deciding” in limitation (e) of claim 1 (and a commensurate limitation in claim 28) is indefinite, as it is unclear how it is decided whether additional data-capture locations along the desired path exist. Final Act. 4. Appellant contends the Examiner erred because, as Appellant points out, the question is whether there are additional data-capture locations along a specific desired path. The answer is either a “yes” or a “no,” and the decision, therefore, is one that someone of ordinary skill in the art can determine. See App. Br. 5-6. Because the disputed limitation in claims 1 and 28 is recited in clear terms and meets the threshold requirements of clarity and precision, we reverse the Examiner’s rejection of these claims under 35 U.S.C. § 112, second paragraph. Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 112, second paragraph, rejection of claims 1, 10, and 28. Rejection of Claims 1, 10, 12—21, and 23—30 under 35 U.S.C. §101 In concluding the rejected claims are directed to patent ineligible subject matter under 35 U.S.C. § 101, the Examiner numerically mapped limitations of claim 1 to a bullet-point list of abstract ideas. Final Act. 5. We agree with Appellant that the Examiner simply considered whether the claim limitations individually involve a patent-ineligible concept and failed to consider each claim as a whole, in light of the Specification, to determine whether the claim’s character as a whole is 5 Appeal 2017-009783 Application 13/604,077 directed to excluded subject matter. App. Br. 6-13. We are persuaded by Appellant’s argument that the Examiner failed to explain how the indicated bullet points correspond to a unifying abstract idea for the claim as a whole. Id. We also note, as Appellant points out, that the Examiner has not addressed the elements of claims other than claim 1. Id. at 12. Because the Examiner did not clearly articulate the reason(s) why the claimed invention is not patent-eligible by providing a reasoned rationale that identifies the judicial exception recited in the claim and why it is considered an exception, we agree with Appellant the Office Action failed to satisfy the burden of establishing a prima facie case of ineligibility under § 101. See 35 U.S.C. § 132(a); In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011). Therefore, on the record before us, the rejection of claims 1, 10, 12- 21, and 23-30 under § 101 should be overturned. Accordingly, we reverse the Examiner’s 35 U.S.C. § 101 rejection of claims 1, 10, 12-21, and 23-30. Rejection of Claims 1, 10, 12—21, and 23—30 under 35 U.S.C. §102 Appellant contends the Examiner erred in finding Lenser discloses the limitation “(b) instructing a robotic maneuvering platform (RMP) to move to a start location on the desired path.” App. Br. 22. We agree with Appellant that, in the cited portion of Lesner, the operator control unit does not instruct the robotic vehicle to move to start location on the desired path. Id. Rather, in Lenser, the started remote vehicles localize themselves and the remote vehicles send data to the operator control unit, thus providing their initial localization information to the operator control unit - not the other way around. See Lenser ^ 13. Thus, we agree with Appellant the Examiner erred because the cited portion of Lesner does not disclose the disputed limitation. 6 Appeal 2017-009783 Application 13/604,077 On the record before us,4 we agree with Appellant that the Examiner erred with respect to the anticipation rejection of independent claims 1 and 10 (see App. Br. 9-12), and claims 12-21 and 23-30, which depend therefrom. Accordingly, we reverse the Examiner’s rejection of independent claims 1 and 10, as well as dependent claims 12-21 and 23-30. DECISION We reverse the Examiner’s decision rejecting claims 1, 10, 12-21, and 23-30. REVERSED 4 Appellants raise additional arguments in the Appeal Brief. Because we find the identified issue is dispositive of the appeal, we do not reach the additional arguments. 7 Copy with citationCopy as parenthetical citation