Ex Parte Kurzweil

Patent Trial and Appeal Board

Oct 30, 2013

10735595 (P.T.A.B. Oct. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte RAYMOND C. KURZWEIL
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Appeal 2012-004209
Application 10/735,595
Technology Center 3700
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Before EDWARD A. BROWN, PATRICK R. SCANLON, and
JILL D. HILL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Raymond C. Kurzweil (Appellant) appeals under 35 U.S.C. § 134(a)
from the Examiner’s rejection of claims 1-25. App. Br. 2. An oral hearing
was conducted on October 22, 2013. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1, 14, and 24 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and reads:
1. A virtual reality encounter system
comprising:
a first mannequin;
a first camera supported by the first
mannequin, the first camera for capturing a first
image of a scene;
a first processor receiving in real time the
first image of the scene from the first camera
supported by the mannequin, the first processor
overlaying a virtual environment over one or more
portions of the received real-time first image to
form a first image of a virtual scene with the first
image of the virtual scene including at least one
remaining portion of the real-time first image, and
sending the first image of the virtual scene
including the at least one remaining portion of the
real-time first image in real time to a
communications network; and
a first set of goggles to render a second
image of a virtual scene from signals received
from the communications network.

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REJECTIONS
Claims 3-7, 9-11, 13, 24, and 25 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 1, 3-11, 13, 24, and 25 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1, 12, 14, 18, and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yee (US 6,016,385; issued Jan. 18, 2000) and Clapper
(US 6,752,720 B1; issued Jun. 22, 2004).
Claims 2 and 15-17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yee, Clapper, and Dundon (US 7,046,151 B2; issued May
16, 2006).
Claims 3-9, 11, 13, 19, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yee, Clapper, Dundon, and Abbasi (US
6,786,863 B2; issued Sep. 7, 2004).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yee, Clapper, Dundon, Abbasi, and Gutierrez (US 4,982,281; issued Jan. 1,
1991).
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Yee, Clapper, and Gutierrez.
Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Yee, Clapper, Dundon, and Abbasi.
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ANALYSIS
Claims 3-7, 9-11, 13, 24, and 25 - 35 U.S.C. § 112, first paragraph
Claims 3-7, 9-11, 13, 24, and 25
The Examiner found that the Specification does not provide a written
description for claim 3. Claim 2 calls for a first humanoid robot having
tactile sensors sending tactile signals, and a body suit having tactile actuators
receiving the tactile signals. Claim 3 depends from claim 2 and recites
motion sensors positioned throughout the body suit and sending motion
signals, and a second humanoid robot receiving the motion signals. The
Examiner found that the Specification does not describe an embodiment
where a body suit may both receive tactile information from a first robot and
transmit control data to a second robot. Id.
Appellant contends that the features of claim 3 are described in the
original application. App. Br. 12; Reply Br. 1-2. In support, Appellant cites
to Figures 9A and 9B, Figures 7A and 7B, and the description for these
figures in the Specification. Id. We agree with Appellant that the original
application provides a sufficient written description of the system recited in
claim 3. In addition to the disclosure identified by Appellant, claims 2 and 3
closely correspond to original claims 2 and 3. Original claims 2 and 3 are
part of the original disclosure and, as such, provide their own written
description. See In re Wertheim, 542 F.2d 257, 264 (CCPA 1976).
Accordingly, we do not sustain the rejection of claim 3, or its dependent
claims 4-7, 9-11, and 13, under 35 U.S.C. § 112, first paragraph.
Claims 24 and 25
Independent claim 24 recites, inter alia, “a set of goggles having a
display, the set of goggles receiving and rendering on the display at least
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one of the first image of a virtual scene and the second image of a virtual
scene from the communications network.” Emphasis added. The Examiner
found that the Specification does not describe an embodiment in which the
goggles may receive more than one of these virtual images. Ans. 6.
Appellant contends that claim 24 requires that the goggles can display
at least one of the first image and the second image depending on which set
of goggles is used and on which images are sent to the goggles. App. Br. 13;
Reply Br. 2. Appellant explains that the claimed set of goggles can be either
the set 20a worn by user 22a, or the set 20b worn by user 22b, and that the
claim does not require a particular set of goggles to be capable of showing
more than one respective image. Id.
We understand Appellant’s position is that the recitation “a set of
goggles having a display” means “a single set of goggles having a display,”
and that the single set of goggles is only required to be capable of showing
one of the first image of a virtual scene and the second image of a virtual
scene. We agree with Appellant that claim 24 does not require the set of
goggles to be able to receive and render both the first image of a virtual
scene and the second image of a virtual scene. As noted by Appellant, the
Specification describes a set of goggles 20a worn by the user 22a to receive
and render images from mannequin 12b, and a set of goggles 20b worn by
the user 22b to receive and render images from mannequin 12a. See Spec. 5,
l. 21 – 6, l. 3; figs. 1, 6. We agree with Appellant that the Specification
provides a sufficient written description for the disputed limitation. Thus,
we do not sustain the rejection of claim 24, and its dependent claim 25,
under 35 U.S.C. § 112, first paragraph.

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Claims 1, 3-11, 13, 24, and 25 – 35 U.S.C. § 112, second paragraph
Claim 1
The Examiner found that there is insufficient antecedent basis for the
recitations “the received real-time first image” and “the real-time first
image” (first occurrence) in claim 1. Ans. 6.
Appellant points out that claim 1 recites “a [first] processor receiving
in real time the first image.” App. Br. 14. We agree with Appellant that this
recitation provides antecedent basis for “the received real-time first image,”
which one skilled in the art would understand is the “first image” received
by the first processor in real time. Id.; see also Reply Br. 3. We also agree
with Appellant that one skilled in the art would understand that the claimed
“real-time first image” refers to the same “first image” received by the first
processor in real time. Id. Accordingly, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 112, second paragraph.
Claims 3-11 and 13
Claim 3 recites “a second humanoid robot, receiving, from the
communications network, the motion signals from the motion sensors . . .
causing a movement of the second robot that is correlated to a movement of
the body suit.” The Examiner correctly found that this limitation, taken
together with claim 2, calls for the body suit to receive tactile signals from
the first robot and to send motion signals to the second robot (Ans. 6), but
stated that “[i]t is unclear how the system would operate with feedback from
a different robot than the suit was controlling” (id.).
We agree with Appellant that the Examiner did not provide adequate
reasoning why one skilled in the art would not understand the meaning of
claim 3 when read in light of the Specification. As noted by Appellant
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(App. Br. 15), Figures 7A and 7B show a user at location A wearing a body
suit with motion sensors 101 and a robot 12b’ at location B with motion
actuators 103, which are activated by signals from the motion sensors 101 to
cause robot 12b’ to move. See also Spec. 6, l. 13 - 7, l. 10. The Examiner’s
position regarding operation of the system appears to be directed to how the
system is used rather than to the meaning of claim 3. We find that the
meaning of claim 3 is sufficiently clear and, hence, definite when read in
light of the Specification. Thus, we do not sustain the rejection of claim 3,
or its dependent claims 4-11 and 13, under 35 U.S.C. § 112, second
paragraph.
Claims 24 and 25
Claim 24 recites the limitations “overlay a virtual environment over
one or more portions of the received first real-time image” and “overlay a
virtual environment over one or more portions of the received second real-
time image.” The Examiner stated that it is unclear if the first and second
images are both overlaid with the same virtual environment or if each image
has its own environment and scene. Ans. 7.
Appellant contends that it would have been clear to one skilled in the
art that Appellant intended either of the Examiner’s two interpretations.
App. Br. 15. We agree with Appellant that the language of claim 24 is
sufficiently clear that it covers both interpretations.
However, we agree with the Examiner that claim 24 is indefinite for
other reasons. Ans. 7-8. Claim 24 recites “first motion sensors disposed
over the second mannequin, the first motion sensors sending motion
actuating signals over a communications network,” “first motion actuators
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disposed over the second mannequin, the first motion actuators receiving
motion sensing signals from the communications network,” and
a body suit having second motion sensors disposed
over the body suit, the second motion sensors
sending the motion actuating signals to the first
motion actuators over the communications
network, the body suit further having motion
actuators disposed over the body suit, the motion
actuators receiving the motion sensing signals from
the first motion sensors over the communications
network.
Emphasis added. The Examiner found that claim 24 is unclear because
“both the first motion sensors on the mannequin and second motion sensors
in the body suit are sending ‘the motion actuating signals’ and both the first
motion actuators in the second mannequin and the motion actuators in the
body suit are receiving ‘the motion sensing signals.’” Ans. 7.
Appellant contends that it would be clear to one skilled in the art that
the body suit sends “motion sensing signals” to the first motion actuators on
the second mannequin, and receives the “motion actuating signals” from the
first motion sensors on the second mannequin. App. Br. 16. However,
claim 24 recites that the body suit sends “motion actuating signals” to the
first motion actuators, and receives “motion sensing signals” from the first
motion sensors. Claim 24 also recites “the first motion actuators receiving
motion sensing signals,” but recites “the second motion sensors sending the
motion actuating signals to the first motion actuators.” Emphasis added.
Claim 24 further recites that the motion actuators disposed over the body
suit “receiving the motion sensing signals from the first motion sensors,” but
recites “the first motion sensors sending motion actuating signals.”
Emphasis added. We agree with the Examiner that claim 24 is unclear and
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indefinite. Thus, we sustain the rejection of claim 24, and its dependent
claim 25, under 35 U.S.C. § 112, second paragraph.
Claims 1, 12, 14, 18, and 22 – Yee and Clapper
As suggested by Appellant (App. Br. 16), we select claim 1 as
representative of the grouping and claims 12, 14, 18, and 22 stand or fall
with claim 1. See 37 C.F.R. § 41.37(c)(vii).
The Examiner found that Yee discloses the claimed virtual reality
encounter system except for overlaying a virtual environment over one or
more portions of the real-time images to form a first image of a virtual
scene. Ans. 8 (citing Yee, col. 4, ll. 2-5 and col. 5, ll. 11-17; fig. 3). The
Examiner found that Clapper discloses a remotely controlled robot that
receives real-time imagery from a camera mounted on the robot and overlays
a virtual environment via a processor. Id. (citing Clapper, Abstract; col. 3, l.
60 – col. 4, l. 10; col. 5, ll. 36-46; figs. 5, 6). The Examiner concluded that it
would have been obvious to modify Yee in view of Clapper to overlay a
virtual environment over the images from the camera, using a processor, “to
make a more entertaining and exciting system for controlling the robot.” Id.
at 8-9.
Appellant contends that one skilled in the art would not have modified
Yee to include a processor “overlaying a virtual environment … to form a
first image of a virtual scene,” as claimed. App. Br. 17. Appellant contends
that Yee requires an operator to take appropriate action based on conditions
at the robot site, and to modify the robot’s operation in accordance with
changed or developing conditions at the robot site effectively and quickly.
Id. (citing Yee, col. 3, ll. 3-4 and ll. 18-20). Appellant further contends that
a person of ordinary skill would have no purpose overlaying a virtual
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environment, as claimed, and that Yee would not have transmitted an image
of a virtual scene to the operator, because the operator would be misled by
the virtual scene and would not be able to take appropriate actions to control
the robot. Id.
We agree with the Examiner that Appellant has not provided any
persuasive argument why the Examiner’s modification of Yee would destroy
its intent, purpose, and function, or make Yee unsatisfactory for its intended
use. Ans. 17; see Reply Br. 4-5. Regarding Appellant’s contention that
Clapper does not disclose a remotely-controlled robot (Reply Br. 4), we note
that a definition of a “robot” is “a mechanism guided by automatic
controls.”1 We find that this definition encompasses Clapper’s teaching.
Appellant does not persuasively explain why Clapper does not teach “a
remotely controlled robot.” The Examiner also indicated that Clapper
allows an operator to control a remotely controlled robot while introducing
virtual environment elements to the camera feed, and that an ordinarily
skilled artisan would be able to apply the same features to Yee, which also
discloses a remotely-controlled robot. Ans. 17.
Claim 1 does not limit the virtual environment overlaid on the real-
time image, or the portion of the real-time image that the virtual
environment overlays, other than reciting “the first image of the virtual
scene including at least one remaining portion of the real-time first image.”
The Examiner has articulated a reason for the modification, and Appellant
has not persuasively explained how overlaying a virtual environment over a
portion of the received real-time image from Yee’s antiphon would either
mislead the operator, or prevent the operator from being able to take

1 See Merriam-Webster’s Collegiate Dictionary (11th ed. 2003).
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appropriate actions to control the antiphon. Nor has Appellant provided any
persuasive argument as to why the results of the modification of Yee would
not have been predictable. Thus, we sustain the rejection of claim 1, and
claims 12, 14, 18, and 22, which fall with claim 1.
Claims 2 and 15-17 – Yee, Clapper, and Dundon
As suggested by Appellant (App. Br. 18), we select claim 2 as
representative of the grouping and claims 15-17 stand or fall with claim 2.
See 37 C.F.R. § 41.37(c)(vii).
Regarding claim 2, the Examiner found that Yee discloses tactile
sensors positioned along the exterior of the robot, and tactile actuators that
receive the tactile signals, but does not disclose that the tactile actuators are
in a body suit. Ans. 9 (citing Yee, col. 4, ll. 32-40; col. 7, ll. 49-58).
The Examiner found that Dundon discloses an interactive body suit
that includes tactile actuators that receive tactile signals from a network.
Ans. 10 (citing Dundon, Abstract). The Examiner concluded that it would
have been obvious to modify Yee in view of Dundon to “incorporate a
bodysuit with actuators to provide complete sensory experience to further
Yee’s suggestion of providing physical interactions to enable the operator to
respond more naturally, more effectively, and more quickly to developing
conditions at the robot site.” Id.
Appellant acknowledges that Dundon discloses an interactive body
suit, but contends that the Examiner’s combination does not render obvious
“a humanoid robot having tactile sensors sending tactile signals to the
communications network” and “a body suit” having the claimed features.
App. Br. 18; see also Reply Br. 6. However, the Examiner found that Yee
discloses a robot with tactile sensors and that Dundon discloses a body suit
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with tactile actuators. Appellant essentially reiterates what the disputed
claim limitations recite and does not adequately address the Examiner’s
stated findings or reasoning for the rejection. Merely reciting the language
of a claim and asserting that the cited prior art references do not disclose
each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) (“A
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.”); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“we hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.”).
Thus, we sustain the rejection of claims 2 and 15-17.
Claims 3-9, 11, 13, 19, 21, and 23 - Yee, Clapper, Dundon, and Abbasi
Regarding claim 3, the Examiner found that Yee’s robotic system
could be duplicated to have two copies of the system each with a robot to
provide two total robots, but does not disclose two robots. Ans. 11. The
Examiner also found that Abbasi teaches remote physical contact using
robots (id. (citing Abbasi, col. 1, ll. 44-57 and ll. 60-63)), and concluded that
it would have been obvious to modify Yee to use its robotic surrogates in
two locations with two robots to expand on teleconferencing and improve
human contact and medical examinations. Id.
Claim 3 calls for “motion sensors positioned throughout the body
suit” and “a second humanoid robot, receiving, from the communication
network, the motion signals from the motion sensors.” Appellant contends
that Abbasi does not teach a body suit or motion sensors. App. Br. 19. We
agree with Appellant that the Examiner did not make a finding that either
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Abbasi or Dundon further discloses a body suit having motion sensors
positioned throughout it. Nor did the Examiner articulate a rationale as to
why these features would have been obvious. Thus, we do not sustain the
rejection of claim 3, or its dependent claims 4-9, 11, and 13.
However, Appellant’s contentions are specifically directed to features
of claim 3 and do not persuasively address the rejection of claim 19. Claim
19 depends from claim 14 and does not recite “motion sensors positioned
throughout the body suit.” As Appellant has not apprised us of error in the
Examiner’s rejection of claim 19, we sustain its rejection, as well as the
rejection of claims 21, and 23, which depend from claim 19.
Claim 10 - Yee, Clapper, Dundon, Abbasi, and Gutierrez
The Examiner’s application of Gutierrez for the rejection of claim 10
does not cure the deficiencies of the Examiner’s rejection of claim 7, as
discussed supra. Thus, we do not sustain the rejection of claim 10.
Claim 20 - Yee, Clapper, and Gutierrez2
Appellant relies on the dependency of claim 20 from claim 19 for
patentability. App. Br. 20; Reply Br. 6-7. However, because we find no
deficiency in the rejection of claim 19, we sustain the rejection of claim 20.
Claims 24 and 25 - Yee, Clapper, Dundon, and Abbasi
We do not reach the merits of the Examiner’s rejection of claims 24
and 25 (Ans. 13-15) because before a proper review of this rejection can be
performed, the subject matter that the claims encompass must be reasonably
understood without resort to speculation. However, because we find that
claims 24 and 25 fail to satisfy the requirements of the second paragraph of

2 Claim 20 depends from claim 19. Accordingly, we treat the rejection of
claim 20 as being over Yee, Clapper, Dundon, Abassi, and Gutierrez.
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35 U.S.C. § 112, we are constrained to reverse, pro forma, the rejection of
these claims under 35 U.S.C. § 103. See In re Steele, 305 F.2d 859, 862
(CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical
person of ordinary skill in the art would have to make speculative
assumptions concerning the meaning of claim language.).

DECISION
The Examiner’s decision rejecting claims 1, 2, 12, and 14-25 is
AFFIRMED, and rejecting claims 3-11, and 13 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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