Ex Parte Matsunaga et al

Patent Trial and Appeal Board

Sep 30, 2016

12521828 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/521,828 0613012009
40854 7590 10/04/2016
RANKIN, HILL & CLARK LLP
38210 GLENN A VENUE
WILLOUGHBY, OH 44094-7808
FIRST NAMED INVENTOR
Shinichi Matsunaga
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.
SAT-19058 1945
EXAMINER
NGUYEN, BAO LONG T
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHINICHI MATSUNAGA, NAOHIDE OGAWA,
and KIMIO TAKAHASHI
Appeal2013-007368
Application 12/521,828
Technology Center 3600
Before LINDA E. HORNER, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2013-007368
Application 12/521,828
STATEMENT OF THE CASE1
Shinichi Matsunaga et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject under 35 U.S.C. § 112, first
paragraph, claims 1--4, 9, 11, and 14 for lack of written description; under 35
U.S.C. § 102(b), claims 1-3, 5-7, and 9 as anticipated by Okamoto (US
4,986,384; iss. Jan. 22, 1991); and under 35 U.S.C. § 103(a): (1) claims 4
and 8 as unpatentable over Okamoto and Ward (US 6,633,800 Bl; iss. Oct.
14, 2003), and (2) claims 10-14 as unpatentable over Okamoto and
Tavolieri.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a remote controller for remotely
manipulating a robot which behaves autonomously." Spec. 1:5-7, Figs. 1, 3.
Claims 1, 5, and 10 are independent.
1 Appellants submitted an Amendment to the claims, amending claims 1, 2, 6,
10, and 12 and cancelling claim 11, in the Response After Final Action. See
Response After Final Act. 2---6 (filed Sept. 12, 2012); see also Appeal Br. 6
(filed Feb. 26, 2013). In the Advisory Action, the Examiner indicated that the
proposed amendments "[would] not be entered" because "[t ]hey raise new
issues that would require further consideration and/ or search." Advisory Act.
1 (mailed Jan. 15, 2013). Appellants acknowledge that the proposed
amendments have not been entered. See Appeal Br. 6. Accordingly, the claim
set before us for review is the one submitted with the Appeal Brief. See
Appeal Br. 27-32, Claims App.
2 C. Tavolieri et al. A Design of a New Leg-Wheel Walking Robot,
Proceedings of the 15th Mediterranean Conference on Control &
Automation, July 27 -29, 2007.
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Application 12/521,828
Claim 1 is illustrative of the claimed subject matter and recites:
1. A remote controller for making a user remotely
manipulate a robot moving autonomously, comprising:
a first manipulation processing element configured to
recognize a designated route input by the user via an input
device, and to recognize a boundary of a designated region and a
position and an external shape of an object existing in the
designated region; and
a second manipulation processing element configured to
determine whether the designated route satisfies a stable
movement requirement, wherein the stable movement
requirement is satisfied when it is determined that the robot is
capable of moving according to the designated route without
straying away from the designated region and with a low
possibility of coming into contact with the object, on the basis of
the recognition result of the first manipulation processing
element, and the second manipulation processing element is also
configured to transmit a first command signal to the robot only
after determining that the stable movement condition is satisfied
by the designated route, the first command signal making the
robot move according to the designated route.
ANALYSIS
Written Description
Claims 1--4 and 11
Regarding claims 1 and 11, the Examiner determines that "[t]here is
no written description in the disclosure of [the] claim limitation wherein
'transmit a first command signal to the robot only after determining that the
stable movement condition is satisfied ... '. This is new matter." Final Act.
4; see also Ans. 5 ("there is no description in the disclosure of this critical
word 'only'."). According to the Examiner, "Figure 3 [of the subject
application] shows that the first command signal from remote controller 2
can be transmitted to robot 1 via two logic paths '01' and '02"'; therefore,
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"transmitting a first command signal to the robot would happen NOT ONLY
after determining that the stable movement condition is satisfied, but also
after determining that the stable movement condition is not satisfied." Ans.
6-8.
In order to satisfy the written description requirement, "the
specification must describe an invention understandable to [a] skilled artisan
and show that the inventor actually invented the invention claimed." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). "[T]he test for sufficiency is whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date." Id.
(citation omitted).
The Specification describes: ( 1) "when the designated route
designated by the user satisfies the stable movement requirement, the 'first
command signal' is transmitted from the remote controller 2 to the robot 1
(refer to S206 and S210 in FIG. 3)" (Spec. 17:17-21) (emphasis added); and
(2) "[ o Jn the other hand, when the designated route designated by the user
does not satisfY the stable movement requirement, not the first command
signal but the 'second command signal' is transmitted from the remote
controller 2 to the robot 1 (refer to S206 and S218 in FIG. 3)" (Spec. 17 :25-
8:4) (emphasis added). At the outset, we agree with Appellants that the term
"only" as applied to the claims does not "exclud[e] all other activity." Reply
Br. 5; see also Ans. 8. We further agree with Appellants that "[t]he term
'only' modifies the term 'after' to indicate that the first command signal is
transmitted to the robot 'only after' determining that the stable movement
requirement is satisfied." Reply Br. 5; see also Appeal Br. 13-14. We
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Application 12/521,828
disagree with the Examiner that Figure 3 of the subject application illustrates
that the first command signal from remote controller 2 can be transmitted to
robot 1 via two logic paths '01' and '02' and that transmitting a first
command signal to the robot would happen NOT ONLY after determining
that the stable movement condition is satisfied, but also after determining
that the stable movement condition is not satisfied. See Ans. 6-8. It is clear
from Appellants' disclosure that Figure 3 of the subject application "can
only be interpreted to disclose that the first command signal is transmitted
after determining that the stable movement requirement is satisfied." Reply
Br. 5; see also Appeal Br. 13-14. In other words, "it is only after
determining that the stable movement requirement is satisfied that the first
command signal is transmitted." Reply Br. 5; see also Appeal Br. 13-14.
For the above reasons, we do not sustain the Examiner's rejection of
claims 1--4 and 11 for lack of written description.
Claims 9 and 14
Regarding claims 9 and 14, the Examiner determines that "[t]here is
no written description in the disclosure of [the] claim limitation wherein
'only transmit one of the first command signal or the second signal after
determining whether the stable movement requirement is satisfied .... '.
This is new matter." Final Act. 4; see also Ans. 5 ("there is no description in
the disclosure of this critical word 'only'."). According to the Examiner,
"[i]t can in seen from FIG. 3 [of the subject application] that after
determining whether the stable movement condition is satisfied at step S206,
NOT ONLY transmit one of the first command signal or the second
command signal, but also at least implement step S214 'DESIGNATED
ROUTE INPUT AGAIN'." Ans. 8.
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At the outset, as discussed above, we agree with Appellants that the
term "only" as applied to the claims does not "exclud[e] all other activity."
Reply Br. 5; see also Ans. 8. We further agree with Appellants that "when
read in view of the specification, the meaning of the language of claims 9
and 14 is clear: that only one of the first and second command signals are
transmitted after determining whether the stable movement requirement is
satisfied." Id. at6;seealsoSpec.13:9-13, 14:16-15:14, 17:17-21, 17:25-
8:4, Fig. 3. In other words, if it is determined that the stable movement
requirement is satisfied then only the first command signal is transmitted.
On the other hand, if it is determined that the stable movement requirement
is not satisfied then only the second command signal is transmitted.
For the above reasons, we do not sustain the Examiner's rejection of
claims 9 and 14 for lack of written description.
Drawing Objection
The Examiner also objected under 37 C.F.R. § 1.83(a) to Appellants'
drawings on the grounds that "[t]he drawings must show every feature of the
invention specified in the claims"; therefore, (1) "the claim limitation
wherein 'transmit a first command signal to the robot only after determining
that the stable movement condition is satisfied ... ' must be shown or the
feature(s) canceled from the claim(s). No new matter should be entered";
and (2) "the claim limitation wherein 'only transmit one of the first
command signal or the second signal after determining whether the stable
movement requirement is satisfied ... ' must be shown or the feature( s)
canceled from the claim(s). No new matter should be entered." Final Act.
2-3. Ordinarily, an objection is reviewable by petition under 37 C.F.R.
§ 1.181 and a rejection is appealable to the Patent Trial and Appeal Board.
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When the issue of new matter presented is the subject of both an objection
and a rejection, the issue is appealable. See MPEP § 608.04(c) (providing
that "where the alleged new matter is introduced into or affects the claims,
thus necessitating their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even though that
new matter has been introduced into the specification also"). To the extent
that the objection to the drawings in the Final Rejection turns on the same
issues as the rejection under 35 U.S.C. § 112, first paragraph, our decision
with respect to the rejection is dispositive as to the corresponding objection.
Anticipation by Okamoto
Claims 1-3
The Examiner finds that Okamoto discloses "a second manipulation
processing element" (i.e., fleet control center 111 of Okamoto). See Final
Act. 6-7; see also Ans. 9-10. The Examiner further finds that fleet control
center 111 of Okamoto is "configured to transmit a first command signal to
the robot only after determining that the stable movement condition is
satisfied by the designated route, the first command signal making the robot
move according to the designated route." See Ans. 9-10 (citing Okamoto, 5:
10-57); see also Final Act. 6-7; Appeal Br. 27, Claims App.
Appellants contend:
Okamoto discloses sending the scheduled driving route as a
command signal to the mobile object 12, and the mobile object
12 then performs obstacle and road surface detection while
moving in accordance with the scheduled driving route. When
an obstacle or rough road surface is detected, redirection of the
mobile object 12 is performed "in cooperation with" the control
station 11 to avoid a collision.
Accordingly, Okamoto teaches transmitting the scheduled
driving route (cited as corresponding to the first command
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signal) prior to performing any obstacle detection (cited as
corresponding to the claimed determination of "whether the
designated route satisfies a stable movement requirement"). It is
only after the mobile object 12 begins moving (i.e., receives the
scheduled driving route and begins moving in accordance
therewith) that Okamoto discloses obstacle detection being
performed. Okamoto does not teach using the detected obstacles
and road information as a prerequisite for sending the scheduled
driving route, and therefore does not teach "transmit[ting] a first
command signal to the robot only after determining that the
stable movement condition is satisfied".
Appeal Br. 17-18; see also id. at 19-20.
Okamoto discloses that "[t]he fleet control center 111 inside the
control station 11 is managed and operated by an operator" and that the fleet
control center 111 "provides the scheduled driving route map data for each
mobile ... and each mobile runs on the basis of this map data." Okamoto,
5:34--41 (emphasis added), Fig. 7. Okamoto further discloses that (1) "[t]he
main driving controller 71 receives map data (route map), representing a
scheduled driving route, from a fleet control center 111 in the control station
11"; (2) the main driving controller 71 "generates an instruction to the
steering controller 72 so as to correct deviations from the scheduled driving
route [received from the fleet control center 111] on the basis of the
information of the map data and the position information from the location
recognizer 122"; and (3) the main driving controller 71 "receives the
obstacle information from the obstacle detector 123 and the road
information from the road surface detector 124, instructs the speed control to
the power controller 73 and to the brake controller 74 to avoid collision,"
and "commands the steering controller 72 to effect avoidance performance."
Okamoto, 5:13-32 (emphasis added), Fig. 7. Okamoto also discloses:
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"When each mobile avoids any obstacles or rough road, the fleet control
center 111 closes or changes the scheduled one or another redundant route in
order to prevent head-on or rear-end collision between the objects, instructs
such preventive action for each mobile whenever necessary, and manages
and controls each mobile." Okamoto, 5 :45-51 (emphasis added), Fig. 7.
Based on our understanding of Okamoto's disclosure, each mobile
object V runs on the basis of the scheduled driving route received from fleet
control center 111 (i.e., the first manipulation processing element transmits a
first command signal regarding the scheduled driving route to each mobile
object V). The main driving controller 71 (i.e., the second manipulation
processing element) generates an instruction to steering controller 72 of each
mobile object V to correct deviations from the scheduled driving route
received from the fleet control center 111 (i.e., the first manipulation
processing element). When each mobile object V avoids any obstacles or
rough road based upon instructions/commands received from the main
driving controller 71 (i.e., the second manipulation processing element), the
fleet control center 111 (i.e., the first manipulation processing element)
either closes or changes the scheduled driving route of the mobile objects V
to prevent collisions between them (i.e., the first manipulation processing
element transmits a second command signal regarding changes to the
scheduled driving route to mobile objects V).
We agree with Appellants that "Okamoto only discloses processing
whereby a [first] command signal is sent [via a first manipulation processing
element (i.e., fleet control center 111/control station 11)] following the
designation or recognition of a route, and prior to a determination of
whether the route satisfies a stable movement requirement." Reply Br. 8
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(emphasis added); see also Appeal Br. 19-20. As such, we agree with
Appellants that "Okamoto does not teach ... a second manipulation
processing element configured to 'transmit a first command signal to the
robot only after determining that the stable movement condition is
satisfied,'" as claimed. Appeal Br. 17, 20; see also Reply Br. 8-9.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 1 and its dependent claims 2 and
3 as anticipated by Okamoto.
Claims 5-7 and 9
The Examiner relies on column 5, lines 10-57, for the limitations of
independent claim 5. See Final Act. 6-7; see also id. at 8.
As discussed above, each mobile object V avoids any obstacles or
rough road based upon instructions/commands received from main driving
controller 71 (i.e., the second manipulation processing element). The fleet
control center 111 (i.e., the first manipulation processing element) then
either closes or changes the scheduled driving route of mobile objects V to
prevent collisions between them (i.e., the first manipulation processing
element transmits a second command signal regarding changes to the
scheduled driving route to mobile objects V). In other words, the fleet
control center 111 (i.e., the first manipulation processing element not the
second manipulation processing element, as claimed) transmits a second
command signal/changes the scheduled driving route of mobile objects V
based upon instructions/commands received by mobile objects V from main
driving controller 71 (i.e., the second manipulation processing element).
We agree with Appellants that "Okamoto does not teach transmitting
a second command signal [via the second manipulation processing element]
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that 'makes the robot search for a route which has common terminal point or
common starting and terminal points with the designated route and which
satisfies the stable movement requirement as a target route,'" as claimed.
See Appeal Br. 21-22; see also id. 28-29, Claims App.; Reply Br. 10-11;
Okamoto, 5:13-32, 45-51, Fig. 7.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 5 and its dependent claims 6, 7,
and 9 as anticipated by Okamoto.
Obviousness over Okamoto and Ward
Claims 4 and 8
The Examiner's rejection of claims 4 and 8 as unpatentable over
Okamoto and Ward is based on the same unsupported findings discussed
above with respect to the rejection of claims 1 and 5. See Final Act. 9-10.
The Examiner does not rely on Ward to remedy the deficiencies of
Okamoto. Accordingly, for reasons similar to those discussed above for the
rejection of claims 1 and 5, we do not sustain the Examiner's rejection of
claims 4 and 8 as unpatentable over Okamoto and Ward.
Obviousness over Okamoto and Tavolieri
Claim 10
Appellants filed a Notice of Appeal appealing from "the last decision
of the examiner." Notice of Appeal, filed Dec. 12, 2012, at 1. Also, "[a]n
appeal, when taken, is presumed to be taken from the rejection of all claims
under rejection unless cancelled by an amendment filed by the applicant and
entered by the Office." 37 C.F.R. § 41.3 l(c). Despite seeking an appeal
from the final rejection of all the pending claims, Appellants do not present
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any arguments in the Appeal Brief directed to the patentability of
independent claim 10. See Appeal Br. 11-25.
"Filing a Board appeal does not, unto itself, entitle an appellant to
de novo review of all aspects of a rejection. If an appellant fails to present
arguments on a particular issue - or, more broadly, on a particular rejection -
the Board will not, as a general matter, unilaterally review those uncontested
aspects of the rejection." Ex parte Frye, 94 USPQ2d 1072, 107 6 (BP AI
2010) (precedential) (holding that the Board reviews a rejection for error
"based upon the issues identified by appellant, and in light of the arguments
and evidence produced thereon"). Having no arguments of error presented
by Appellants in this appeal as to the rejection of claim 10, we summarily
sustain the rejection of this claim under 35 U.S.C. § 103(a) as unpatentable
over Okamoto and Tavolieri.3
Claim 11
Claim 11 depends from claim 10 and includes limitations similar to
those discussed above for claim 1. See Appeal Br. 31, Claims App. The
Examiner's rejection of claim 11 as unpatentable over Okamoto and
Tavolieri is based upon the same unsupported findings discussed above with
respect to the rejection of claim 1. See Final Act 13. The Examiner does not
rely on Tavolieri to remedy the deficiencies of Okamoto. Accordingly, for
reasons similar to those discussed above for the rejection of claim 1, we do
3 Appellants attempted to amend "claim 10 to incorporate dependent claim
11" in the Response After Final Amendment, which was not entered by the
Examiner. See Appeal Br. 6; see also note 1. Appellants state that "the
instant Appeal Brief will address claims 1 - 14 without the amendments
proposed in Appellant[s'] response to the final Office Action of June 12,
2012." Appeal Br. 6.
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not sustain the Examiner's rejection of claim 11 as unpatentable over
Okamoto and Tavolieri.
Claims 12-14
Claim 12 depends from claim 10 and includes limitations similar to
those discussed above for claim 5. See Appeal Br. 31, Claims App. The
Examiner's rejection of claim 12 as unpatentable over Okamoto and
Tavolieri is based upon the same unsupported findings discussed above with
respect to the rejection of claim 5. See Final Act 13. The Examiner does not
rely on Tavolieri to remedy the deficiencies of Okamoto. Accordingly, for
reasons similar to those discussed above for the rejection of claim 5, we do
not sustain the Examiner's rejection of claim 12, and its dependent claims 13
and 14, as unpatentable over Okamoto and Tavolieri.
DECISION
We REVERSE the decision of the Examiner to reject claims 1--4, 9,
11, and 14 for lack of written description.
We REVERSE the decision of the Examiner to reject claims 1-3, 5-7,
and 9 as anticipated by Okamoto.
We REVERSE the decision of the Examiner to reject claims 4 and 8
as unpatentable over Okamoto and Ward.
We AFFIRM the decision of the Examiner to reject claim 10 as
unpatentable over Okamoto and Tavolieri.
We REVERSE the decision of the Examiner to reject claims 11-14 as
unpatentable over Okamoto and Tavolieri.
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).
AFFIRMED-IN-PART
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