Ex Parte Hager et al

Patent Trial and Appeal Board

Nov 30, 2017

11104822 (P.T.A.B. Nov. 30, 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.
11/104,822 04/12/2005 Gregory D. Hager PA2986US 9327
80641 7590 11/30/2017
Gard & Kaslow LLP
4 Main Street, Suite 20
Los Altos, CA 94022
EXAMINER
LI, CE LI
ART UNIT PAPER NUMBER
3661
MAIL DATE DELIVERY MODE
11/30/2017 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 GREGORY D. HAGER and ELIOT LEONARD WEGBREIT
____________

Appeal 2016-008590
Application 11/104,822
Technology Center 3600
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Gregory D. Hager and Eliot Leonard Wegbreit (“Appellants”)1 appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 2–4,
12–18, 22–25, 27, 28, and 30–53.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 According to Appellants, the real party in interest is Strider Labs, Inc.
Appeal Br. 4.
2 Claims 1, 5–11, 19–21, 26, and 29 are canceled. Appeal Br. 58–61
(Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 2, 34–37, 42, and 45–50 are independent. Claim 2 is
reproduced below and is illustrative of the subject matter on appeal.
2. A method for automatically computing desirable palm grasp
configurations of an object, comprising the steps of:
receiving at a processor as an input a description of the
surface of an object, said object and description each being of an
arbitrary 3D shape not restricted to a fixed set of shape
primitives;
automatically selecting by the processor a plurality of
grasp configurations of a robotic hand, the robotic hand
comprising a palm and one or more fingers, each grasp
configuration specifying a hand configuration and joint variables
of the hand, and contact points for the palm and fingers on the
object’s surface as so described;
computing by the processor the coefficient of friction at
each of the contact points in the selected configurations;
receiving at a processor as an input a description of a
specific external wrench that applies to the object;
computing by the processor a quality measure for each
grasp configuration representing the ability of the robotic hand
to hold the object against the specific external wrench in the
selected configuration; and
comparing by the processor the quality measure of each of
the grasp configurations to determine which grasp configurations
have the best quality measures.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Irie JP 09150384 A June 10, 1997
Aage Bendiksen & Greg Hager, A Vision-Based Grasping System for
Unfamiliar Planar Objects, Proc. of the IEEE International
Conference on Robotics & Automation, pp. 2844–2849 (May 1994)
(hereinafter “Bendiksen”).
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Eris Chinellato et al., Ranking Planar Grasp Configurations for a
Three-Finger Hand, Proc. of the IEEE International Conference on
Robotics & Automation, pp. 1133–1138 (Sept. 2003) (hereinafter
“Chinellato”).
Jean-Paul Gourret et al., Simulation of Object and Human Skin
Deformations in a Grasping Task, 23 Comput. Graph. 21–30 (1989)
(hereinafter “Gourret”).
Li Han et al., Grasp Analysis as Linear Matrix Inequality Problems,
17 IEEE Transactions on Robotics and Automation 663–674 (Dec.
2000) (hereinafter “Han”).
Andrew T. Miller & Peter K. Allen, GraspIt!: A Versatile Simulator
for Grasp Analysis, Proc. of the ASME Dynamic Systems and Control
Division, pp. 1251–1258 (2000) (hereafter “Miller 2000”).
Andrew T. Miller et al., Automatic Grasp Planning Using Shape
Primitives, Proc. of the IEEE International Conference on Robotics
and Automation, pp. 1824–1829 (Sept. 2003) (hereafter “Miller
2003”).

REJECTIONS
I. Claims 2–4, 12–18, 22–25, 27, 28, and 30–46 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement because of the recitation that the claimed
object and a description of its surface are “of an arbitrary 3D shape
not restricted to a fixed set of shape primitives.” Final Act. 6–7.3
II. Claims 2–4, 12–18, 22–25, 27, 28, and 30–50 stand rejected
under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Id. at 8–11.

3 The Examiner withdrew a rejection of claim 42 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
because of the recitation of “a second quality measure.” Ans. 3; see Final
Act. 7.
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III. Claims 2–4, 12–14, 27, 28, 33–37, 39, 47, 48, and 51–534 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Bendiksen,
Miller 2000, and Miller 2003. Id. at 11–20.
IV. Claims 15–18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bendiksen, Miller 2000, Miller 2003, and Gourret. Id. at 20–21.
V. Claims 42 and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bendiksen, Miller 2000, Miller 2003, and
Chinellato. Id. at 21–24.
VI. Claims 22–25, 43, 45, 49, and 50 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bendiksen, Miller 2000, Miller 2003,
and Han. Id. at 24–28.
VII. Claims 31, 32, 38, 40, and 41 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Bendiksen, Miller 2000, Miller 2003, and Irie.
Id. at 28–29.

OPINION
Rejection I
Each of independent claims 2, 34–37, 42, 45, and 46 recites, in
relevant part, “said object and description each being of an arbitrary 3D
shape not restricted to a fixed set of shape primitives.” Appeal Br. 58, 62–
66, 68–69 (Claims App.). The Examiner understands this to mean “that the

4 Even though the Examiner failed to include reference to claims 51–53 in
the heading for this rejection (see Final Act. 11), the Examiner makes
reference to these claims within the body of the rejection (see id. at 19–20).
We consider the Examiner’s oversight in the heading to be a typographical
error, and therefore, we list claims 51–53 as being subject to this ground of
rejection.
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object can be, but is not limited to[,] objects that are of a fixed set of shape
primitives and the description[s] . . . can be, but are not limited to, a fixed set
of [shape] primitives.” Final Act. 6. The Examiner determines that “the
claim limitation excludes 3D shapes that are restricted to a fixed set of shape
primitives,” but “this exclusion is not supported by the original disclosure.”
Id.; see also id. at 7 (explaining that “‘a fixed set of shape primitives’ is not
disclosed or suggested”). According to the Examiner, “[t]he [S]pecification
does not explicitly disclose negative limitations.” Ans. 2.
Appellants argue that “the Specification and original claims
repeatedly refer to an object of arbitrary 3D shape,” and, therefore,
“describe[] an object not restricted to a fixed set of shape primitives.”
Appeal Br. 27. In particular, Appellants assert that the Specification
“indicates that the invention deals with ‘general three-dimensional objects’
and ‘general surfaces.’” Id. at 27–28 (quoting Spec.5 ¶¶ 7, 257). According
to Appellants, one of ordinary skill in the art “would understand that the
recitation that the invention applies to ‘general three-dimensional objects’
and the various techniques for describing an object’s surface all indicate . . .
a three-dimensional object of arbitrary shape, and not limited to one that is
part of a ‘fixed set of shape primitives.’” Id. at 28.
We agree with Appellants that the Specification provides support for
the limitation in question sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph. In particular, the

5 Appellants’ citations to “Spec.” include paragraph numbers that appear to
correspond to Appellants’ Patent Application Publication (US 2006/0012198
pub. Jan. 19, 2006). However, in this opinion, citations to “Spec.” refer to
the original Specification.
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Specification describes planning robot grasps in an unstructured
environment having a variety of “general three-dimensional objects”
differing in size, shape, and weight, including objects that the robot has not
previously encountered. Spec. ¶¶ 5, 7. The Specification also describes
prior art grasp planning approaches that use simplified sets of known shape
primitives such as spheres, cylinders, cones and boxes. Id. ¶¶ 19, 22. In this
regard, the disclosure provided in the Specification would reasonably
convey to one having ordinary skill in the art, as of the filing date, that
Appellants possessed the claimed subject matter of planning grasps for
arbitrary 3D object shapes that are not restricted to a fixed set of shape
primitives. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed. Cir. 2010) (en banc).
Accordingly, we do not sustain the Examiner’s rejection of claims 2–
4, 12–18, 22–25, 27, 28, and 30–46 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Rejection II
Appellants argue claims 2–4, 12–18, 22–25, 27, 28, and 30–50
together as a group. Appeal Br. 29–36; Reply Br. 9–16. We select claim 2
as the representative claim, and claims 3, 4, 12–18, 22–25, 27, 28, and 30–
50 stand or fall therewith. 37 C.F.R. § 41.37(c)(1)(iv).
The Supreme Court has set forth “a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71–73 (2012)).
Under that framework, it must be “determine[d] whether the claims at issue
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are directed to one of those patent-ineligible concepts”—i.e., a law of nature,
a natural phenomenon, or an abstract idea. Id. If so, “the elements of each
claim [must be considered] both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78). The Supreme Court has described the second part of the
analysis as “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73) (alteration in
original).
The Examiner determines that claim 2 is directed to a method of
“computing desirable precision grasp configuration of an object which
comprises the steps of: receiving at a processor as an input, selecting by the
processor a plurality of grasp configuration[s], computing the coefficient of
friction, receiving an input, computing a quality measure, and comparing the
quality measure.” Ans. 4; see also Final Act. 8 (the Examiner determining
that the claimed method “acquires data, applies the data to an algorithm and
compares the results”). According to the Examiner, “[t]hese steps describe
the concept of collecting and comparing data to use [a] mathematical
formula to identify options, which corresponds to concepts identified as
abstract ideas by the courts.” Ans. 4. The Examiner concludes that the
claimed subject matter is directed to “an abstract idea, particularly a
mathematical relationship, without other limitations that show more than a
mere instruction to apply the abstract idea.” Final Act. 9.
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Appellants argue that the Examiner errs in concluding that the claimed
subject matter is directed to an abstract idea. Appeal Br. 30. We are not
persuaded by Appellants’ argument.
Instead, we agree with the Examiner that, under the first step of the
analysis, claim 2 is directed to an abstract idea. See Final Act. 8–9. The
claimed steps amount to receiving information (i.e., describing an object,
grasp configurations, and an external wrench) and generating additional
information (i.e., fiction coefficients, quality measures, and grasp
configurations determined to have the best quality measures) using an
algorithm.6 Our reviewing courts have held claims ineligible under § 101
when directed to manipulating existing information, such as by using
algorithms, to generate additional information. See Parker v. Flook, 437
U.S. 584, 585, 594–96 (1978) (rejecting as ineligible claims directed to (1)
measuring the current value for a variable in a catalytic conversion process,
(2) using an algorithm to calculate an updated “alarm-limit value” for that
variable, and (3) updating the limit with the new value); Gottschalk v.
Benson, 409 U.S. 63, 71–72 (1994) (rejecting as ineligible claims directed to
an algorithm for converting binary-coded decimal numerals into pure binary
form); Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed.
Cir. 2016) (discussing how “collecting information” and “analyzing
information by steps people go through in their minds, or by mathematical

6 Although claim 2 recites the algorithm in words rather than as a
mathematical formula, the claim nevertheless recites an algorithm. See In
re Grams, 888 F.2d 835, 837 n.1 (Fed. Cir. 1989) (“It is of no moment that
the algorithm is not expressed in terms of a mathematical formula. Words
used in a claim operating on data to solve a problem can serve the same
purpose as a formula.”).
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algorithms, without more” are abstract ideas); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.”); SmartGene, Inc. v. Advanced Biological Labs, S.A., 555 F.
App’x. 950, 951–55 (Fed. Cir. 2014) (comparing new and stored
information and using rules to identify options).
Therefore, when read as a whole, claim 2 is directed to a mathematical
algorithm for manipulating data, which, for the above reasons, constitutes a
patent-ineligible abstract idea.
Regarding the second step of the Alice framework, the Examiner
determines:
The claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more than the abstract idea. Generic computer
components recited as performing generic computer functions
that are well-understood, routine and conventional activities
amount to no more than implementing the abstract idea with a
computerized system. The use of generic computer components
to collect and receive information through an unspecified
interface does not impose any meaningful limit on the computer
implementation of the abstract idea.
Ans. 4–5; see also Final Act. 8.
Appellants first argue that “a robotic hand is inherently required, as
shown by the very context of the invention, and almost the entire
Specification, since computing desirable grasps of a robotic hand would
have no point in the absence of some use of such grasps.” Appeal Br. 31
(emphasis omitted). We are not persuaded by Appellants’ argument because
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the broadest reasonable interpretation of claim 2 does not require the actual
robotic hand. Instead, the claim recites “selecting by the processor a
plurality of grasp configurations of a robotic hand;” “computing by the
processor a quality measure for each grasp configuration representing the
ability of the robotic hand to hold the object against the specific external
wrench in the selected configuration;” and “comparing by the processor the
quality measure of each of the grasp configurations to determine which
grasp configurations have the best quality measures.” Appeal Br. 58–59
(Claims App.). Although the determined desirable grasp configurations may
be intended to be used by a robotic hand to grasp an object, the claim does
not require, either expressly or inherently, a robotic hand to perform the
claimed steps. Instead, only a processor is required.
Appellants next argue that, even if the robotic hand is not in the claim,
“the claims recite additional elements which do amount to ‘significantly
more’ than the judicial exception.” Appeal Br. 32 (citing 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 74618 (Dec. 16,
2014) (hereafter “Guidance”)). In particular, Appellants assert that the
claimed subject matter is “confined to a particular useful application, i.e., the
computation of desirable grasps for use with a robotic hand in grasping an
object (id. at 33 (emphasis omitted)) and “clearly describes an improvement
to another technology or technical field, i.e., planning grasps for a robotic
hand having a palm, and adds a specific limitation other than what is well-
understood, routine and conventional in the field, i.e., planning grasps for a
robotic hand without a palm” (id. at 33–34 (emphasis omitted)).
In support of this argument, Appellants point to Diamond v. Diehr,
450 U.S. 175 (1981) and assert that the analysis in Diehr did “not rely on the
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post-computation steps of actually curing rubber to find patentability, but
rather clearly states that it is the way in which the temperature is constantly
measured and the cure time recalculated that provide the ‘something more’
than mere computer implementation of an algorithm that justifies patent
eligibility.” Appeal Br. 34–35. Appellants analogize “the comparisons of
quality measures for different grasp configurations in the present
application” “to the ‘repetitive computer recalculation of the appropriate
cure time’ based upon constant temperature measurement.” Id. at 35.
According to Appellants, “as in Diehr, the steps claimed herein act in
concert to provide a result that improves another technology[;] in Diehr the
curing of rubber, and here the grasping of an object by a robotic hand with a
desirable grasp configuration.” Reply Br. 15.
Appellants’ reliance on Diehr is unavailing. The claims at issue in
Diehr recited a method that included automatically opening a press based on
the calculations and comparisons. See Diehr, 450 U.S. at 187 (explaining
that the claimed method requires “installing rubber in a press, closing the
mold, constantly determining the temperature of the mold, constantly
recalculating the appropriate cure time through the use of the formula and a
digital computer, and automatically opening the press at the proper time”).
The Court in Diehr found that the respondents’ claims were not an attempt
to patent an unpatentable principle (e.g., mathematical formula), but rather
an industrial process “which, when considered as a whole, is performing a
function which the patent laws were designed to protect” even though it
implemented or applied a mathematical formula.” Id. at 192. In contrast,
claim 2 appears to seek to patent an unpatentable principle (i.e., the abstract
idea of a processor (i) receiving input data relating to an object and an
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external wrench applied to the object and (ii) generating output data relating
to a grasp configuration with certain contact points having certain computed
coefficients of friction), rather than an industrial process into which the
unpatentable principle has been integrated. That is, the abstract idea is not
applied in a sufficiently specific industrial process in claim 2 to demonstrate
an improvement in a technology or technical field or confine the claim to a
particular useful application.7
Appellants also argue that the present claims are similar to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) because “general-
purpose computer components are not added to fundamental robotic
practice, or even a known one, but rather are directed to a specific
implementation of a solution to a problem in robotic hand grasping, again as
evidenced by the very prior art cited by the Examiner.” Reply Br. 16. This
argument is not convincing. In Enfish, the court found that “the self-

7 Although we need not separately consider independent claims 37, 45, and
46 because they fall with representative claim 2, we note that each of claims
37, 45, and 46 is directed to a system including, in relevant part, “a robot
which receives one of the grasp configurations having the best quality
measures and commands the robotic hand to use the received grasp
configuration for grasping the object.” Appeal Br. 65, 68, 69 (Claims App.).
Notably, these claims merely require the robot to “command” (i.e., provide
instructions to) the robotic hand, but do not require the robot to actually
control the robotic hand using the grasp configuration to grasp the object by,
for example, making contact between the object and the palm of the robotic
hand. Thus, claims 37, 45, and 46 also appear to be directed to an abstract
idea because the nominal recitation of a robot commanding (i.e., providing
instruction to) a robotic hand amounts to an application of the abstract idea
to a conventional robot to perform conventional robot functions (i.e., receive
input data and provide output commands), rather than sufficiently
integrating the abstract idea into an industrial process as a whole as in Diehr.
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referential table recited in the claims on appeal is a specific type of data
structure designed to improve the way a computer stores and retrieves data
in memory.” Id. at 1339. The court found they were “not faced with a
situation where general-purpose computer components are added post-hoc to
a fundamental economic practice or mathematical equation,” but “[r]ather,
the claims are directed to a specific implementation of a solution to a
problem in the software arts.” Id. The question becomes whether the claims
as a whole “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke[s] generic processes and machinery.” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
Here, where claim 2 merely involves the steps of “receiving”
descriptions of an object and external wrench, “automatically selecting” a
plurality of robotic hand grasp configurations, “computing” quality measures
for each grasp, and “comparing” quality measures to determine the best
grasp configurations (without any specificity regarding, for example, the
grasp configurations or their quality measures or the logic for computing the
coefficient of friction at contact points specified by the grasp
configurations), Appellants have not persuaded us that claim 2 is directed to
anything more than a method that qualifies as an abstract idea for which a
processor is invoked as a conventional tool. Appellants have not provided
any specificity regarding any particular inventive technology associated with
the steps of claim 2. The computer elements described in the Specification
and claims (e.g., processor) appear to function in a conventional manner to
execute program instructions and operations. Receiving data and computing
data are steps that are well-understood, routine, and conventional functions
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of a general-purpose computer, and Appellants do not provide adequate
evidence to the contrary. The Specification supports this view by discussing
only generic elements used in performing the steps. See Spec. ¶¶ 254–255.
In particular, the Specification describes that “[t]he method may be
implemented on a computer executing program instructions.” Id. ¶ 254.
Although the Specification describes that “steps may also be implemented in
specialized programmable processors,” the Specification only lists generic
computer hardware elements including “digital signal processors (DSPs),
graphics processors (GPUs), media processors, and streaming processors.”
Id. ¶ 255. There is no further description, in the claims or the Specification,
of any particular technology for performing the steps recited in the claims
other than generic computer components (i.e., “processor”) used in their
ordinary capacity as a tool to perform mathematical operations. In sum,
Appellants have not persuaded us that claim 2 is directed to a specific
application of computation and analysis designed to achieve an improved
technological result, as opposed to being directed merely to ordinary
functionality of a generic processor (e.g., receiving and computing data).
For the foregoing reasons, we find nothing in claim 2 to be
sufficiently transformative to render claim 2 patent eligible. We sustain the
Examiner’s rejection of claim 2, and claims 3, 4, 12–18, 22–25, 27, 28, and
30–50 falling therewith, under 35 U.S.C. §101 as being directed to patent-
ineligible subject matter.
Rejection III
Independent claim 2 recites, in relevant part, “receiving at a processor
as an input a description of the surface of an object, said object and
description each being of an arbitrary 3D shape not restricted to a fixed set
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of shape primitives.” Appeal Br. 58 (Claims App.). Independent claims 34–
37, 47, and 48 recite similar limitations. Id. at 62–65, 68–70.
The Examiner finds that Bendiksen teaches most of the limitations of
the independent claims, including “acquiring a description of the surface of
an object (pg 2846, column 1, lines 11–20).” Final Act. 12, 15, 17. The
Examiner takes the position that Bendiksen “discloses acquiring a
description of the surface of an object, or receiving such a[] description at a
processor as an input (page 2845, section 2.1, image is a description of the
surface, page 2846, Column 1, lines 11–20, edges, pictures are
descriptions).” Ans. 5–6. According to the Examiner, “even 2D object
descriptions are still descriptions of a 3D object, such as a surface of a 3D
object.” Id. at 6; see also id. at 7 (stating that “2D object descriptions and
grasp description of Bendiksen are 3D object descriptions”).
Appellants argue Bendiksen does not teach receiving a description of
the surface of an object. Appeal Br. 37. Appellants assert that the cited
portions of Bendiksen only teach planar 2D descriptions of objects using
edge point data. Id. at 38 (citing Bendiksen 2844); see id. at 39 (emphasis
omitted) (asserting that Bendiksen only describes an object “by its outline on
the working surface, i.e., a plane”). In other words, “projected edge data is
only a two-dimensional projection; it is not the same as a three-dimensional
surface of an object, nor does it describe the three-dimensional surface of an
object.” Reply Br. 18. We agree that a sustainable case of obviousness has
not been established.
Although we agree with the Examiner that Bendiksen discloses
receiving a description of a 3D object as an input (Ans. 5–6 (citing
Bendiksen 2845, 2846)), the Examiner’s rejection does not establish that
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Bendiksen discloses that the description is of the object’s surface.
Bendiksen discloses that “[t]he image acquisition and processing system
consists of a single COHU camera and associated frame buffer, together
with software for edge detection.” Bendiksen 2845. Bendiksen describes
that an “edge detector is used to locate the points in the image that may
correspond to edges of the object.” Id. In this regard, we agree with
Appellants that Bendiksen’s “object description is only 2D, since it concerns
only ‘edge point data.’” Appeal Br. 38 (quoting Bendiksen 2844). In other
words, Bendiksen acquires a 2D image of an object and uses edge detection
to obtain a 2D description (i.e., outline) of the object. Although Bendiksen’s
edge detection provides a description of a three-dimensional object (i.e., a
description of the outline of the three-dimensional object), we fail to see how
it provides a description of the surface of the object (i.e., a description of the
three-dimensional shape or boundary of the three-dimensional object).
Moreover, although Bendiksen discloses that the “[t]he same
formulation holds for contact data obtained for the three dimensional case,
and our current implementation of the grasp analyzer handles 3D data”
(Bendiksen 2847), the Examiner has not adequately explained how this
isolated disclosure in Bendiksen is relied on for the step of receiving at a
processor as an input a description of the surface of an object (i.e., a
description of the three-dimensional shape or boundary of the object), nor
provided reasoning with some rational underpinning to support the
obviousness of utilizing this disclosure in connection with the remainder of
teachings of Bendiksen, Miller 2000, and Miller 2003.
Accordingly, we do not sustain the rejection of independent claims 2,
34–37, 47, and 48, and claims 3, 4, 12–14, 27, 28, 33, 39, and 51–53 which
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depend therefrom, under 35 U.S.C. § 103(a) as unpatentable over Bendiksen,
Miller 2000, and Miller 2003.
Rejections IV–VII
The Examiner’s rejections of claims 15–18, 22–25, 31, 32, 38, 40–43,
45, 46, 49, and 50 rely on the same proposed combination of Bendiksen,
Miller 2000, and Miller 2003 that we find deficient for the reasons stated
above. Final Act. 20–29. The Examiner does not make any findings as to
the scope and content of Gourret, Chinellato, Han, or Irie that would cure the
deficiency in the underlying combination of Bendiksen, Miller 2000, and
Miller 2003. Accordingly, for the reasons discussed above, we do not
sustain the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 15–
18 as unpatentable over Bendiksen, Miller 2000, Miller 2003, and Gourret;
claims 42 and 46 as unpatentable over Bendiksen, Miller 2000, Miller 2003,
and Chinellato; claims 22–25, 43, 45, 49, and 50 as unpatentable over
Bendiksen, Miller 2000, Miller 2003, and Han; and claims 31, 32, 38, 40,
and 41 as unpatentable over Bendiksen, Miller 2000, Miller 2003, and Irie.

DECISION
The Examiner’s decision to reject claims 2–4, 12–18, 22–25, 27, 28,
and 30–46 under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement is reversed.
The Examiner’s decision to reject claims 2–4, 12–18, 22–25, 27, 28,
and 30–50 under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter is affirmed.
The Examiner’s decision to reject claims 2–4, 12–18, 22–25, 27, 28,
31–43, 45–53 under 35 U.S.C. § 103(a) is reversed.
Appeal 2016-008590
Application 11/104,822

18
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART