Ex Parte Hanrahan et al

Patent Trials and Appeals Board

May 1, 2019

12700160 - (D) (P.T.A.B. May. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/700,160
98471 7590
InTouch Health
C/0 CPA Global
FILING DATE
02/04/2010
05/03/2019
900 2nd A venue South, Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Kevin Hanrahan
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P036 7311
EXAMINER
THERIAULT, STEVENB
ART UNIT PAPER NUMBER
2179
NOTIFICATION DATE DELIVERY MODE
05/03/2019 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):
clambrecht@intouchhealth.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN HANRAHAN, MARCO PINTER,
DANIEL STEVEN SANCHEZ, BLAIR WHITNEY,
DAVID BJORN ROE, CHARLES S. JORDAN, and
YULUNWANG
Appeal2018-007999
Application 12/700, 160
Technology Center 2100
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
DIRBA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejection of claims 1-14, which are all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 This Decision uses the following abbreviations: "Spec." for the original
Specification, filed Feb. 4, 2010; "Final Act." for the Final Office Action,
mailed Apr. 6, 2017; "App. Br." for Appellants' Appeal Brief, filed May 7,
2018; "Ans." for Examiner's Answer, mailed June 6, 2018; and "Reply Br."
for Appellants' Reply Brief, filed Aug. 5, 2018.
2 According to Appellants, the real party in interest is InTouch
Technologies, Inc. App. Br. 2.
Appeal2018-007999
Application 12/700, 160
BACKGROUND
Appellants' disclosed embodiments and claimed invention relate to a
robot that initiates a teleconferencing session with a remote control station.
Abstract.
Claim 1, reproduced below, is representative of the claimed subject
matter (with emphasis added to disputed limitation):
1. A robot system comprising:
a remote control station including a station camera, a station
monitor, a station microphone, a station speaker, and an input device;
and
a robot located at a robot site, said robot including a robot
camera, a robot monitor, a robot microphone, a robot speaker, and a
user interface on the robot, said user interface allows a user at the
robot site to initiate a teleconferencing session between said remote
control station and said robot without first receiving a communication
at said robot from said remote control station,
wherein, during said teleconferencing session, said station
monitor is coupled to and displays an image provided by said robot
camera, said robot monitor is coupled to and displays an image
provided by said station camera, said station speaker is coupled to and
produces a sound provided by said robot microphone, said robot
speaker is coupled to and produces a sound provided by said station
microphone, and a user of said remote control station controls a
movement of said robot by manipulating the input device, wherein
manipulating the input device does not require issuing voice
commands.
App. Br. 11 (Claims App'x) (emphasis and line break added).
THE REJECTIONS
RI. Claims 1---6 and 8-13 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Wang '438 (US 2005/0204438 Al, published
Sept. 15, 2005), Wang '268 (US 2008/0065268 Al, published
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Application 12/700, 160
Mar. 13, 2008), and Cross (US 2010/0076600 Al, filed Sept. 27, 2007,
published Mar. 25, 2010). 3 Final Act. 3-7.
R2. Claims 7 and 14 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as obvious over Wang '438, Wang '268, Cross, and Williams
(US 2009/0248041 Al, published Oct. 1, 2009). Final Act. 7-8.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential). To the extent Appellants have not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We have considered all of Appellants' arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Obviousness Rejection RI of Claims 1-6 and 8-13
Appellants argue claims 1---6 and 8-13 together as a group. See App.
Br. 7-10; Reply Br. 1---6. Therefore, consistent with the provisions of
37 C.F.R. § 4I.37(c)(l)(iv), we limit our discussion to independent claim 1.
Independent claim 8 and dependent claims 2-6 and 9-13 stand or fall with
claim 1.
3 In the header for rejection RI, the Examiner lists claims 1-14, but the
rejection does not discuss claims 7 and 14. Final Act. 3-7. Because the
Examiner lists and discusses claims 7 and 14 in rejection R2 (id. at 7-8), we
consider inclusion of these claims in rejection RI to be a typographical error.
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Appeal2018-007999
Application 12/700, 160
Claim 1
Claim 1 requires "a robot" that can be controlled by "a remote control
station" during a "teleconferencing session." App. Br. 11 (Claims App'x).
The claim also requires: "a user interface on the robot, said user interface
allows a user at the robot site to initiate [the] teleconferencing session
between said remote control station and said robot without first receiving a
communication at said robot from said remote control station." Id. (referred
to in this Decision as the "user interface limitation"). 4
4 We have not considered, and do not decide, whether Appellants have
satisfied the written description requirement of 35 U.S.C. § 112, first
paragraph. Claim 1 was amended during prosecution to state: "said user
interface allows a user at the robot site to initiate a teleconferencing session
between said remote control station and said robot without first receiving a
communication at said robot from said remote control station." Compare
App. Br. 11 (Claims App 'x) ( emphasis added) (identifying current claim 1)
with Spec. 32 (identifying originally filed claim 1 ); see also App. Br. 12
(Claims App'x) (reciting similar limitation in claim 8). This claim language
differs from the Specification's disclosure. See Spec. 26: 18-21 (Interface
402 "may include a 'Connect' button 404 and a 'Disconnect' button 406,
that allow a user to initiate and terminate access to the head 400" located on
the robot.), 27:14--15 ("The interface 402 allows a user at the robot 15 site to
initiate a teleconferencing sessions [sic]."), 2:6-8 (noting prior art
teleconferencing sessions are initiated at the remote station sites, limiting
accessibility); see also App. Br. 5 ( citing these passages as providing
disclosure for the user interface limitation). The Examiner notes the
Specification does not define this limitation, but the Examiner's comments
also indicate the Specification does not reasonably convey possession of the
claimed subject matter by Appellants. Ans. 5-6; see Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (providing
test for compliance with written description requirement). In the event of
further prosecution, the Examiner may wish to consider a written description
rejection of the claims on this basis. Although the Board is authorized to
reject claims under 37 C.F.R. § 4I.50(b), no inference should be drawn
when the Board elects not to do so. See MPEP § 1213.02 (9th ed. 2018).
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Appeal2018-007999
Application 12/700, 160
The Examiner finds Wang '4 3 8 teaches the user interface limitation.
Final Act. 4--5. Specifically, the Examiner points to DUI 120 on robot 12
and explains a user at the robot site could use DUI 120 "to initiate/terminate
a teleconference session between the robot and the remote terminal by
selecting the 'connect' and 'disconnect' button." Ans. 6, 7; see Final Act. 4.
Appellants agree Wang '438 teaches a user interface on the robot that
allows a user at the robot site to initiate a teleconferencing session. Reply
Br. 3 ("[T]he Examiner correctly points out that Wang '438 discloses that
user interface 120, illustrated in FIG. 4, can be displayed at the robot."); id.
at 2-3 ( agreeing a user at the robot site's selection to connect satisfies the
claimed requirements of initiating a teleconferencing session "without first
receiving a communication at said robot from said remote control station").
But Appellants contend the user interface limitation is not taught by Wang
'438 because the initiated session is between the robot and other robots, not
between the robot and the remote control station, as required by the claim.
Id. We do not agree with Appellants' understanding of the reference, and
consequently, we are not persuaded by Appellants' arguments.
As Wang '438 explains, the user interface, DUI 120 (shown in
Figure 4), can be displayed at the robot and/or at the remote station. Wang
'438, ,r 31. This user interface includes box 142, and "[a] user can initiate
and terminate a session by selecting box 142," which "changes from
CONNECT to DISCONNECT when the user selects the box to initiate a
session." Id. ,r 38, Fig. 4. Although the other participant of this session is
not explicitly identified, the Examiner found this describes a connection
between the robot and the remote station. See Ans. 7. We agree that Wang
'438 teaches or suggests a user interface, on the robot, that can initiate a
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Application 12/700, 160
session between the robot and the remote station. This understanding is
informed by the context of Wang '438, which describes a robot and a remote
station and the techniques for connecting those devices. E.g., Wang '438,
Abstract, ,r,r 34--36 (describing initiation of connection between remote
station and robot). Although Wang '438 states, in passing, that a robot can
be connected to other robots or a plurality of remote stations (id. ,r 18), the
preferred embodiment described in Wang '438 includes one robot and one
remote station (e.g., id. at Fig. 1 ).
Appellants present a different understanding of the passage, arguing
that the session is a connection between the robot and other robots. Reply
Br. 3-5. Appellants base this interpretation on the fact that the preceding
sentence describes a button (i.e., CHANGE button 140) that can be used to
select and control a different robot in a system with multiple robots. Id. at 3.
Appellants connect these teachings and, from this, conclude that box 142
only teaches connection with another robot. Id. However, Appellants
present no evidence to support their proposed interpretation of the reference,
and we are not persuaded by Appellants' attorney argument. See In re
Schulze, 346 F .2d 600, 602 (CCP A 1965) ("Argument in the brief does not
take the place of evidence in the record.").
We find the more natural reading is that the paragraph describes each
of the buttons located in the top left comer of the user interface. See Wang
'438 ,r 38 (describing boxes 138, 140, 142, 144, and 146), Fig. 3 (showing
spatial proximity of those boxes). This understanding is further supported
by the remainder of this paragraph, which describes the use of other buttons
that are not functionally related to either box 142 or button 140, but are
spatially proximate to both. Id. ,r 38 ( describing systems settings and
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Appeal2018-007999
Application 12/700, 160
support buttons 144 and 146). Importantly, we need not (and do not) decide
whether Wang '438 teaches or suggests initiating a connection between the
robot and other robots; rather, we need only decide whether Wang '438
teaches or suggests initiating a connection between the robot and the remote
station, as required by the claim. For the reasons explained above, we find
that it does. Accordingly, we are not persuaded of error in the Examiner's
finding that Wang '4 3 8 teaches or suggests the user interface limitation. 5
Therefore, based upon these findings, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Accordingly, we sustain the Examiner's obviousness rejection of
independent claim 1, and grouped claims 1---6 and 8-13, which fall
therewith.
5 Furthermore, even ifwe were to find that Wang '438 only teaches a robot
user interface that initiates a connection between the robot and other robots,
Appellants fail to explain why it would not have been obvious for the user
interface to also initiate a session with the remote station. See KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability."). For
example, Appellants do not contend such a modification would be beyond
the level of skill of one of ordinary skill in the art. See Leapfrog Enters.,
Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (noting lack
of evidence that modification "was uniquely challenging or difficult for one
of ordinary skill in the art"). Indeed, Appellants' arguments focus only on
the explicit disclosure of Wang '43 8, rather than addressing what is---or is
not-suggested by this reference. See generally Reply Br. 2-5.
Accordingly, Appellants have not shown that Wang '438 fails to suggest the
user interface limitation.
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Appeal2018-007999
Application 12/700, 160
Additional Observations
Because Wang '438 teaches or suggests the disputed user interface
limitation ( which is dispositive of the Appeal), we do not address the
teachings of Cross in detail. But, we provide the following observations, in
the event of further prosecution.
Examiner found, in the alternative, "Cross teaches telecommunication
from the remote robot to the station user and visa versa [sic]." Final Act. 6
( citing Cross ,r,r 50-56). Appellants assert, without explanation, that Cross
fails to teach the user interface limitation. App. Br. 9. Appellants'
conclusory argument fails to identify error in the Examiner's findings, and
based on our review of the reference, we perceive no such error.
In particular, Cross teaches a remote terminal 430 that can control
movement of robot 100 during a teleconferencing session. Cross ,r,r 50-51.
Cross notes the connection between remote terminal 430 and robot 100 may
be established by either a user at the robot site or a remote user. Id. ,r,r 56-
57, 59---61; see also id. ,r 71 ("The base station 200 ... send[ s] an outgoing
connection packet to the remote terminal's apparent IP address, as shown in
FIG. 10. As illustrated in FIG. 11, the remote terminal 430 then connects to
the base station 200 by establishing connection C .... "). Cross describes an
RC unit 560, which teaches or suggests the claimed "user interface on the
robot" because RC unit 560 allows a user at the robot site to interface with a
robot. Id. ,r 59. "[T]he RC unit 560 may include a 'call out' button to
initiate outgoing telecommunication connections from the mobile robot
100." Id. ,r 61. Accordingly, Cross teaches or suggests "a user interface on
the robot, said user interface allows a user at the robot site to initiate a
teleconferencing session between said remote control station and said robot
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without first receiving a communication at said robot from said remote
control station," as required by claim 1.
Obviousness Rejection R2 of Claims 7 and 14
The Examiner rejects dependent claims 7 and 14 over a combination
of Wang '438, Wang '268, Cross, and Williams. Final Act. 7-8. Appellants
do not separately argue these dependent claims, but rather rely on the
arguments made with respect to claim 1. App. Br. 9-10. These arguments
however, are not persuasive for the reasons discussed above. Consequently,
we find Appellants' arguments do not show error in the Examiner's factual
findings and the conclusion of obviousness of claims 7 and 14.
DECISION
We affirm the Examiner's decision rejecting claims 1-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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