Ex Parte Irmler et al

Patent Trial and Appeal Board

Feb 28, 2017

13236983 (P.T.A.B. Feb. 28, 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.
13/236,983 09/20/2011 Holger Irmler 10-DIS-228-PR-US-UTL 2696
63652 7590 03/02/2017
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
KONG, SZE-HON
ART UNIT PAPER NUMBER
3661
NOTIFICATION DATE DELIVERY MODE
03/02/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOLGERIRMLER and ASA KALAMA
Appeal 2015-004868
Application 13/236,9831
Technology Center 3600
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Holger Irmler and Asa Kalama (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1—21. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Disney Enterprises,
Incorporated. Appeal Br. 1 (filed October 23, 2014).
Appeal 2015-004868
Application 13/236,983
INVENTION
Appellants’ invention relates to “systems and methods for controlling
robots or robotic assemblies, such as those used to provide facial animation
of a worn character head, so as to allow photographers (i.e., nearly any
viewer with a camera) to capture improved photographs of the robots and
robotic characters.” Spec. 11.
Claims 1,11, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. A method for controlling a robotic apparatus, comprising:
with a motor controller, first operating a robotics assembly
to animate the robotic apparatus;
detecting an upcoming image capture of the robotic
apparatus by a camera; and
with the motor controller in response to the detecting of
the upcoming image capture, second operating the robotics
assembly to pose the robotic apparatus for the upcoming image
capture.
Appeal Br. 19 (Claims App.) (emphasis added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4—9, 11,13—18, and 21
under 35 U.S.C. § 103(a) as unpatentable over Yamada (US
2002/0081937 Al, pub. June 27, 2002) and Saitou (US
7,756,322 B2, iss. July 13, 2010).
II. The Examiner rejected claims 3, 10, 12, 19, and 20 under 35
U.S.C. § 103(a) as unpatentable over Yamada, Saitou, and
Hornsby (US 6,736,694 B2, iss. May 18, 2004).
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Application 13/236,983
ANALYSIS
Rejection I
Appellants’ claims 1,11, and 16, from which the remaining claims
depend, all recite a specific “control system” or “robot” that has the
operability and configuration to, inter alia, “[detect] an upcoming image
capture of the robotic apparatus by a camera” and have an automated
response of posing for the upcoming image capture (claim 1), “detect
camera operations indicating a camera operating within a time period to
capture an image of the robot” and have an automated response of posing
during the time period (claim 11), and “detect[] an upcoming image capture
by a camera” and have an automated response of posing for the upcoming
image capture (claim 16). See Appeal Br. 19, 20, 21 (Claims App.).
Appellants point to these capabilities of the claimed “control system” or
“robot” and argue they “are not shown by the combined teaching of Yamada
and Saitou.” Appeal Br. 6.
Specifically, Appellants contend that in the Examiner’s citations to
Yamada, “[t]here is no control of a robot. .. being performed in response to
an upcoming action by an outside device let alone a detected image capture
(of the controlled robot) process/action being performed by a camera
(targeting the controlled robot).” Id. at 7. In addition, in response to the
Examiner’s citations of Saitou as support for the disclosure of a “control
system” or “robot” with the claimed operability and configuration,
Appellants assert “[t]here is no mention of detecting an upcoming image
capture, e.g., by robot lb, or of the robot lb posing in response to such
detecting (e.g., the humans are instructed to move relative to robot lb).” Id.
at 9. For the following reasons, Appellants’ arguments are persuasive.
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Application 13/236,983
Finding Yamada does not disclose “detecting an upcoming image
capture of the robotic apparatus by a camera,” the Examiner concludes that
limitation “is merely detecting a signal or an object with the sensors of the
robotic apparatus.” Final Act. 7. The Examiner states further, this limitation
“is merely detecting light signals from a device that could be a camera
device” and “is merely defined by the Applicant as a certain light
sources/pattems are detected and recognized.” Adv. Act. 2 (transmitted Oct.
20, 2014). However, “[i]n determining obviousness, there is ‘no legally
recognizable or protected ‘essential’, ‘gist’, or ‘heart’ of the invention.’”
W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548 (Fed. Cir.
1983) (quoting AroMfg. Co. v. Convertible Top Replacement Co., 365 U.S.
336, 339 (1961)).
The Examiner’s interpretation is a generalization, which is
unreasonably broad. Notably, no support is provided for the Examiner’s
indication that Appellants “defined” the “detecting an upcoming image
capture of the robotic apparatus by a camera” limitation in the Specification,
and we do not find any express representation, or clear indication, of an
intention to redefine this claim language differently than its plain and
ordinary meaning. By generalizing this claim language to mean, “merely
detecting a signal or an object with the sensors of the robotic apparatus,” the
Examiner errs in relying on an unreasonably broad interpretation.2 Contrary
2 In an Advisory Action, transmitted October 20, 2014, the Examiner states,
“there’s nothing else in the originally filed specification describe or suggest
how to distinguish these detected light sources/pattems from any other
similar light sources/pattems not provided or generated by a camera.” In
addition, the Examiner states, at page 4 of the Answer, “Appellants have]
not been able to provide any clear position as to how does the robot
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Application 13/236,983
to the Examiner’s conclusion, the plain language of the claims, which is
consistent with the Specification (see paragraphs 12, 13), require the
“robotic apparatus” to detect the existence of a camera, specifically, which,
in particular, is about to take its picture.
The Examiner finds Yamada discloses, “detecting surrounding objects
and conditions in the environment,” and concludes it would have been
“obvious for one of ordinary skill in the art performing the same operations
and providing the same results for a robotic device capable of detecting,
recognizing or identifying various objects including camera and receiving
light sources as command to perform pre-programmed operations and
tasks.” Final Act. 6, 7. Similarly, in the Answer, the Examiner finds,
“Yamada discloses the robot apparatus that can recognizes objects, which is
very well-known in the art and aware of environmental conditions of its
surrounding including detections of sound and lights,” moreover, Yamada’s
“capabilities can be used for detecting an upcoming image capture by a
camera and in response, perform preset actions and controls.” Ans. 3^4
(emphasis added).
The Examiner, however, offers no evidentiary support Yamada’s
robotic system is capable of recognizing the existence of a camera that is
about to take its picture. Although Yamada teaches a light detection element
can be used to determine the existence of the user “may be distinguished by
apparatus of the presently claimed invention knows the detection has to be
an upcoming image capture of the robot apparatus by a camera.” But the
Examiner has not relied on the written description and enablement
requirements to reject the claims. Therefore, despite the Examiner’s
apparent concerns, the issues of written description and enablement for the
claimed subject matter are not before us.
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Application 13/236,983
recognizing that it is bright during night hours by combining the time and
brightness” (Yamada 1225), it does not support a finding, under the
preponderance of the evidence standard, that the toy robot of Yamada can
distinguish its environment to identify a camera readying to take the robot’s
picture. “The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” In re Warner, 379
F.2d 1011, 1017 (CCPA 1967) (emphasis added).
In the alternative, the Examiner finds, “Saitou in the same field of the
art discloses detecting an upcoming image capture of the robotic apparatus
by a camera and controlling the robotic apparatus to operate the robot to
pose.” Final Act. 7 (citing Saitou, Abstract, 2:20-40, 3:2—9, 7:3—16, 8:26—
52, 15:26-35, 16:39-A7, 18:24—37, 20:11—37, 55-59, Fig. 14). Having
considered the listed citations from Saitou, we agree with Appellants’
characterization of them (see Appeal Br. 8—9) as providing “no mention of
detecting an upcoming image capture, e.g., by robot lb, or of the robot lb
posing in response to such detecting (e.g., the humans are instructed to move
relative to robot lb).” Appeal Br. 9.
Instead, those citations describe a robot with the capability to
determine whether someone is present for a photo opportunity and adjust its
position to take a picture of the person(s) and/or communicate with another
robot to position it properly within the frame and/or provide instructions to
the person(s) to adjust their positions within the frame of the shot. In each
description of the Saitou robot, the robot is taking the photo (or being
instructed that another robot is about to take its picture) and there is no
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Application 13/236,983
evidence cited that the robot is ever detecting a camera is readying to take its
picture. As a result, we do not find a preponderance of the evidence
supports the Examiner’s finding Saitou discloses detecting an upcoming
image capture of the robotic apparatus by a camera and, additionally,
controlling the robotic apparatus to operate the robot to pose, in response to
detecting such an event.
Finally, the Examiner’s decision appears to assume having a robot
detect an upcoming image capture of it by a camera and, in response thereto,
controlling the robot to pose for the upcoming image capture is obvious.
The Examiner offers no explanation for why a person of ordinary skill in the
art would reconfigure the robots Yamada and Saitou disclose to operate (and
have the ability to operate) in the claimed manner. Conclusory statements
are not enough to satisfy the Examiner’s obligation to provide reasoned
explanation for its decision. In re Sang-Su Lee, 277 F.3d 1338, 1343—45
(Fed. Cir. 2002). The Examiner must explain why a person of ordinary skill
in the art would modify the prior art references to create the claimed
invention. In re Kotzab, 111 F.3d 1365, 1371 (Fed. Cir. 2000). The
Examiner did not do so done in this case.
Therefore, for the foregoing reasons, we do not sustain the Examiner’s
rejection of claims 1, 11, and 16, or claims 2, 4—9, 13—15, 17, 18, and 21
depending therefrom.
Rejection II
The Examiner’s rejection of claims 3, 10, 12, 19, and 20 depends on
the Examiner’s determination claim 1 is obvious in view of Yamada and
Saitou. See Final Act. 14. Because the Examiner erred in determining claim
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1 is obvious in view of Yamada and Saitou (see supra Rejection I), and
Hornsby is not used to cure the deficiencies, we do not sustain the
Examiner’s rejection of dependent claims 3, 10, 12, 19, and 20.
DECISION
We reverse the Examiner’s decision to reject claims 1—21.
REVERSED
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