Ex Parte ODownload PDFPatent Trial and Appeal BoardApr 27, 201814736208 (P.T.A.B. Apr. 27, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 141736,208 37833 7590 Richard C. Litman FILING DATE 06/10/2015 05/01/2018 112 S. West Street Alexandria, VA 22314 FIRST NAMED INVENTOR WAYNE PATRICK O'BRIEN 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. 14695.03 6996 EXAMINER SCHNIREL, ANDREW B ART UNIT PAPER NUMBER 2625 NOTIFICATION DATE DELIVERY MODE 05/01/2018 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): uspto@4patent.com uspto@nathlaw.com mbashah@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WAYNE PATRICK O'BRIEN Appeal2018-004218 Application 14/736,208 Technology Center 2600 Before JEAN R. HOMERE, IRVINE. BRANCH, and MICHAEL M. BARRY, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a Non-Final Rejection of claims 1 and 15, which constitute all claims pending in this application. 1 Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm in part. 1 Appellant identifies the real party in interest as the inventor of record, Wayne P. O'Brien. App. Br. 3. Appeal2018-004218 Application 14/736,208 Introduction According to Appellant, the claimed subject matter relates to a holographic user interface (100) for manipulating and controlling an external device such as a robotic arm (110) in a remote location. Spec. i-f 1. In particular, the holographic user interface (100) includes a holographic display unit (30) for constructing and displaying a hologram (116), and a motion detector (35) for detecting movement and location of a physical command object, such as a user's finger or hand (17) relative to the displayed hologram. Id. i-f 12. The motion detector (35) communicates with a controller CPU (10), which converts into a command signal the detected location of the physical command object (17) within the displayed hologram (116). Id. The command signal is transmitted to the external device (110), which subsequently emulates the detected movement of the physical object. Id. Representative Claim Independent claim 1 is representative, and reads as follows: Claim 1. A holographic user interface system adapted for direct manipulation of an external device, the system consisting of: the external device; a holographic display unit for constructing and displaying a hologram, wherein the hologram visually represents at least one object for manipulating the external device; a motion detector for detecting direct, real time movement and location of a physical command object relative to the displayed hologram; a controller in real time continuous communication with the motion detector for converting the detected location of the physical command object relative to its position with respect to the displayed hologram into a command signal when the command object is at or near a contact point in the hologram or performs a contact code; and means for transmitting the command signal in real time to the external device controllable by the controller, wherein the means for transmitting the 2 Appeal2018-004218 Application 14/736,208 command signal further includes means for the controller to discriminate between generic motions made by the command object and motions specific to the manipulation of the external device without user intervention. V erard et al., hereinafter "V erard" Sun et al., hereinafter "Sun" Montellese hereinafter "Montellese" Prior Art Relied Upon US 2014/0282008 Al US 2011/0301813 Al US 7,671,843 B2 Rejections on Appeal Sept. 18, 2014; Dec. 8, 2011; Mar. 2, 2010; Claim 1 stands rejected under 35 U.S.C. § l 12(a) as failing to comply with the written description requirement. Non-Final Act. 3---6. Claim 1 stands rejected under 35 U.S.C. § l 12(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. Id. at 6-11. Claim 1 stands rejected under 35 U.S.C. § 102(a)(l) as being anticipated by Verard. Id. at 12-13. Claim 15 stands rejected under 35 U.S.C. § 103 as being unpatentable over the combination of Sun, Montellese, and Verard. Id. at 14--18. 3 Appeal2018-004218 Application 14/736,208 ANALYSIS2 Written Description Rejection Appellant argues that the Examiner erred in concluding the originally- filed written description does not support the recitation of "means for transmitting the command signal in real time to the external device controllable by the controller" (emphasis included; bolding and internal quotations omitted), as recited currently in independent claim 1. App. Br. 9. In particular, Appellant argues that, although the Specification does not recite, verbatim, the term "real-time," the ordinarily skilled artisan would recognize an inference of "real-time" from the description "[t]he CPU 10 interprets motion of the command object 17 ... to transmit a command signal to the robotic arm 110 for real, physical manipulation of the physical object 115." Id. at 11 (citing Spec. i-f 20). According to Appellant, even though the CPU has to interpret inputs to perform calculations, which will take time, such processing is not antithetical to real time transmission. Id. at 11 (citing Spec. i-fi-123, 25). Appellant also argues that "real-time" is a conventional term of art, which does not require a quantitative value. Id. at 11 (citing Evidence Appendix including a declaration previously filed under 37 CPR§ 1.132, dated Jan. 20, 2017). Therefore, Appellant submits that the ordinarily-skilled artisan would readily appreciate that "real-time" does not mean zero delay, but rather a delay "small enough that it does not interfere 2 Rather than reiterate all the arguments of Appellant and all the Examiner's findings and conclusions, we refer to the Specification (filed Jun. 10, 2015) ("Spec."); Appeal Brief (filed November 6, 2017) ("App. Br."), the Reply Brief (filed March 12, 2018) ("Reply Br."), and the Answer (mailed January 11, 2018) ("Ans."), and the [2nd] Non-Final Office Action (mailed June 7, 2017) ("Non-Final Act.") for the respective details. 4 Appeal2018-004218 Application 14/736,208 with the timely performance of the desired action." Id. Accordingly, Appellant contends to have described "a real-time system" as "one which controls an environment by receiving data, processing it, and returning the results concurrently to affect the environment at that time." Id. at 13. These arguments are persuasive. To satisfy the written description requirement, a patent Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. Moba, B. V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319 (Fed. Cir. 2003). An applicant may show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). However, our reviewing court guides that "[a] description which renders obvious the invention for which an earlier filing date is sought is not sufficient." Lockwood, 107 F.3d at 1572 (quoting Jepson v. Coleman, 314 F.2d 533, 536 (CCPA 1963)). "[I]t is 'not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure .... Rather, it is a question whether the application necessarily discloses that particular device"' Id. (emphasis added). At the outset, we note it is indisputable that the term "real-time" appears nowhere in Appellant's originally-filed Specification, drawings or claims. The written description requirement does not impose an "in haec verba" recitation of the disputed claim language in the original Specification. It nonetheless requires a sufficient description of the claim 5 Appeal2018-004218 Application 14/736,208 subject matter so as to enable one of ordinary skills in the art to make and use the invention. In re Wright, 866 F.2d 422, 425 (Fed. Cir 1989); see also Agilent Techs., Inc. v. Ajjj;metrix, Inc., 567 F.3d 1366 (Fed. Cir. 2009). As correctly noted by Appellant, and undisputed by the Examiner, the Specification indicates that the CPU interprets a command object to issue a command signal to the robotic arm to manipulate a physical object. Spec. i-fi-120, 23, 25. Therefore, the ordinarily-skilled artisan, having read Appellant's Specification, would readily understand that Appellant had possession of a command being performed by the robotic arm upon receiving the command signal from a CPU, which has processed a user's detected command input gesture. Because Appellant's Specification does not define "real-time", the cited limitation must be given its broadest reasonable interpretation consistent with Appellant's disclosure, as explained in In re Morris: [T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); see also In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (stating that "claims must be interpreted as broadly as their terms reasonably allow."). Our reviewing court further states, "the 'ordinary meaning' of a claim term is its meaning to the ordinary artisan after reading the entire patent." Phillips v. A WH Corp., 415 F .3d 1303, 1321 (Fed. Cir. 2005) (en bane). Consequently, we conclude that under the broadest reasonable interpretation, "real time" denotes an event "relating to a system in which input data is processed within milliseconds so 6 Appeal2018-004218 Application 14/736,208 that it is available virtually immediately as feedback." 3 Therefore, despite the CPU processing the user input into a command subsequently executed by the robotic arm, we agree with Appellant that the ordinarily-skilled artisan would not interpret "real-time" to mean "without delay." Accordingly, we do not agree with the Examiner's finding that the disclosed delay in processing the input gesture cuts against the claimed real-time transmission of the signal to the external device. Ans. 19-23. We thus find Appellant's proffered definition of a real-time system as "one which controls an environment by receiving data, processing it, and returning the results concurrently to affect the environment at that time" to be reasonable, and to comport fairly with the cited portions of the Specification as well as the cited dictionary definition above. App. Br. 13. Because Appellant has shown that he had possession of the command signal being transmitted in real-time to the external device, we are persuaded of error in the Examiner's written description rejection of claim 1. Indefiniteness Rejection Appellant argues that the Examiner erred in concluding that claim 1 is indefinite. App. Br. 15-16. In particular, Appellant argues that the ordinarily-skilled artisan would not construe the computer processing the signal before transmitting it to the external device as somehow cutting against the claimed real-time transmission. Id. at 16. Instead, the ordinarily skilled artisan would be apprised that the scope of the disputed limitation 3 See https://en.oxforddictionaries.com/definition/real_time (last accessed Apr. 26, 2018) 7 Appeal2018-004218 Application 14/736,208 requires some processing by the CPU before the signal is transmitted to the external device. Id. This argument is persuasive. "The legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharmaceutical Co. Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991)). The "inquiry therefore is merely to determine whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity." In re Moore, 439 F.2d1232, 1235 (CCPA 1971 ). For example, a claim is indefinite in a situation such as "where the language 'said lever' appears in a dependent claim where no such 'lever' has been previously recited .... " Ex parte Moelands, 3 USPQ2d 1474, 1476 (BP AI 1987). As discussed above, we do not agree with the Examiner that the claimed "real-time" transmission of the signal from the CPU to the external device somehow implies an instantaneous transmission without delay or prior to processing. Ans. 23-24. Instead, as discussed above, we agree with Appellant that the ordinarily-skilled artisan would be readily apprised that such real time transmission necessarily entails the requisite processing of the signal by the CPU prior to being forwarded to the external device. Because the Examiner has failed to show that the ordinarily-skilled artisan, having read Appellant's Specification, would not be apprised of the scope of the claim, we do not sustain this rejection. 8 Appeal2018-004218 Application 14/736,208 Anticipation Rejection Appellant argues that the Examiner erred in finding that V erard describes a computer that discriminates in real-time between generic motions and specific motions made by a command object to manipulate an external object without user intervention, as recited independent claim 1. App. Br. 16-18. In particular, Appellant argues that although Verard discloses a real-time procedure wherein a robot performs a specific movement concurrently with a surgeon's performance, the cited procedure does not discriminate between generic and specific movements. App. Br. 17-18 (citing Verard i-f 63). Likewise, Appellant argues that although Verard alternatively discloses another procedure wherein the surgeon reviews his/her movements before allowing the robot to perform them, thereby discriminating between generic and specific movements, such procedure is not performed in real-time and without user intervention. Id. at 18 (citing Verard i-fi-1 63, 64 ). These arguments are persuasive. At the outset, we note the claim requires the CPU distinguishing between generic and specific movements in real-time, and without user intervention. It is undisputed that Verard's first embodiment describes a CPU that performs a specific movement in real- time, and without user intervention, but it does not contemplate generic movements to thereby discriminate between the two types of movements. Verard i-f 63. It is further undisputed that Verard's second embodiment discriminates between specific movements and generic movements, but it does not do so in real-time and without user intervention. Id. i-fi-163, 64. Although the combination of the cited embodiments of V erard teaches or 9 Appeal2018-004218 Application 14/736,208 suggests the disputed claim limitations under an obviousness standard, 4 we agree with Appellant that none of the cited embodiments, alone, describes the disputed limitations to satisfy the anticipation rejection before us. Accordingly, we are persuaded of error in the Examiner's anticipation rejection of claim 1. Obviousness Rejection Appellant argues that the Examiner erred in concluding that the combination of Sun, Montellese, and Verard renders claim 15 unpatentable. App. Br. 20-24. In particular, Appellant contends the cited references are not properly combined to teach or suggest the following limitation of claim 15: means for transmitting the command signal to the vehicle's steering system controllable by the controller, wherein the means for transmitting the command signal further includes means for the controller to discriminate between back-and-forth motions made by the user's hands and clockwise or counterclockwise rotational motions specific to the manipulation of the vehicle's steering system without user intervention. App. Br. 21. Appellant argues that although Sun discloses a controller displaying virtual lane markings on a windshield of a vehicle, wherein the markings include the vehicle's relative position within the roadway, Sun lacks the claimed hologram, as well as the disputed limitations. Id. at 22. Likewise, Appellant argues although Montellese discloses projecting an image of a steering wheel that can receive an input to modify a holographic image of the steering wheel to its new perceived location, the cited disclosure is 4 In the event of continued prosecution, the Examiner should consider whether claim 1 is obvious over Verard. 10 Appeal2018-004218 Application 14/736,208 redundant to Sun's controller for detecting movement of the steering wheel into a modified display of the roadway markings, but fails to cure the noted deficiencies of Sun. Id. at 23. Additionally, Appellant argues the Examiner's reliance on Verard to cure the noted deficiencies of Sun and Montellese is misplaced because they do not have the structure or a need for Verard's procedure to be performed thereupon. Id. at 23-24. Appellant's arguments are not persuasive. At the outset, we note Appellant's mere allegation that Sun does not teach a hologram does not address or persuasively rebut the Examiner's finding that Sun teaches a holographic images projected by a holographic projector. Ans. 28 (citing Sun i-f 16). Likewise, Appellant's mere allegation does not persuasively rebut the Examiner's finding that Verard's disclosure relied upon by the Examiner teaches the claimed means for transmitting the command signal. Final Act. 17 (citing Verard i-f 63). Although Appellant makes a nominal discussion of textual portions relied upon by the Examiner to reject those claims, Appellant has not provided a meaningful analysis of those textual portions to distinguish the disputed claim limitations therefrom. Appellant is reminded that a general allegation as to the purported benefits of the claimed invention, and a general discussion of the prior art relied upon by the Examiner in the rejection are not tantamount to a responsive argument. Such a response to the Examiner's findings is insufficient to persuade us of Examiner error, as mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, No. 2009-004693, slip op. at 7-8 (BP AI Aug. 10, 2009) (informative); see also In re Lovin, 652 11 Appeal2018-004218 Application 14/736,208 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e 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."); cf In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) ("It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for [patentable] distinctions over the prior art."). Additionally, we find the Examiner's proposed combination of the cited teachings of Sun, Montellese, and Verard is no more than a predictable arrangement of old elements, with each performing the same function it had been known to perform, yielding no more than one would expect from such an arrangement. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The ordinarily-skilled artisan, being "a person of ordinary creativity, not an automaton," would be able to fit the teachings of the cited references together like pieces of a puzzle to predictably result in a steering wheel including a holographic user interface system having a controller that transmits a command signal (e.g., clockwise and counterclockwise rotational motions of the wheel) to the vehicle steering system without user intervention. Id. at 420-21. Because Appellant has not demonstrated that the Examiner's proffered combination would have been "uniquely challenging or difficult for one of ordinary skill in the art," we agree with the Examiner that the proposed modification would have been within the purview of the ordinarily skilled artisan. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Consequently, we are not persuaded of error in the Examiner's obviousness rejection of claim 15. 12 Appeal2018-004218 Application 14/736,208 DECISION For the above reasons, we reverse the Examiner's written description rejection, the indefiniteness rejection, and the anticipation rejection of claim 1. However, we affirm the Examiner's obviousness rejection of claim 15. 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 13 Copy with citationCopy as parenthetical citation