Ex Parte Sakagami et al

Patent Trial and Appeal Board

Feb 5, 2013

10814343 (P.T.A.B. Feb. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSHIAKI SAKAGAMI, KOJI KAWABE, NOBUO HIGAKI,
NAOAKI SUMIDA, YOUKO SAITOU, and TOMONOBU GOTOU
____________

Appeal 2010-007021
Application 10/814,343
Technology Center 2600
____________

Before DENISE M. POTHIER, STANLEY M. WEINBERG, and
BARBARA A. BENOIT, Administrative Patent Judges.

BENOIT, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-8, all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
Appellants’ invention relates to an image transmission system for a
mobile robot. See generally Abstract. Such a system can be used, for
example, to look for children separated from their parents in places where a
large number of people congregate. Id. Claim 1 is illustrative and reads as
follows:
1. An image transmission system for a mobile robot, comprising:
a camera for capturing an image as an image signal;
a microphone for capturing sound as a sound signal;
human detecting means for detecting a human from the captured
image and/or sounds;
a power drive unit for moving the entire robot toward the detected
human;
image cut out means for cutting out an image of the detected human
according to information from the camera; and
image transmitting means for transmitting the cut out human image to
an external terminal,
wherein the human detecting means comprises:
means for detecting a moving object as a human from the image
signal obtained from the camera;
means for extracting an outline of the moving object;
means for extracting a face inside the outline of the moving object;
means for detecting a position of a hand by searching for a skin color
area other than the face inside the outline of the moving object;
means for recognizing a gesture and/or posture of a human based on a
positional relationship between the face and the hand; and
means for detecting a human according to the gesture and/or posture.
The Examiner relies on the following as evidence of unpatentability:
Kuno US 5,802,494 Sept. 1, 1998
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Shinichi JP 2000326274 Nov. 28, 2000
Ishii US 6,278,904 B1 Aug. 21, 2001
Higaki US 2004/0028260 A1

Feb. 12, 2004
(filed Aug. 7, 2003)

The Rejections
1. The Examiner rejected claims 1, 2, and 4-8 under 35 U.S.C.
§ 103(a) as unpatentable over Higaki and Kuno. Ans. 5-10, 13.1
2. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Higaki, Kuno, and Shinichi. Ans. 10-11.
3. The Examiner also rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Higaki, Kuno, and Ishii. Ans. 11-13.

CONTENTIONS
The Examiner finds that Higaki substantially teaches or suggests all of
the limitations of independent claim 1. Ans. 5-6. In concluding claim 1
would have been obvious, the Examiner further relies on Kuno’s teaching of
an image transmitting means for transmitting a human image to an external
terminal. Ans. 7.
Rather than presenting arguments directed to the Examiner’s factual
findings of what Higaki teaches or makes obvious, Appellants assert prior
invention to antedate Higaki. App. Br. 12-17; Reply Br. 3-6. Appellants
contend that they have submitted sufficient evidence to prove conception
prior to August 7, 2003 (the effective filing date of Higaki) and to show
Appellants acted diligently to reduce their invention to practice from prior to

1 Throughout this opinion, we refer to the Appeal Brief filed August 3, 2009
(App. Br.), the Examiner’s Answer mailed December 16, 2009 (Ans.), and
the Reply Brief filed February 12, 2010 (Reply Br.).
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August 7, 2003, until constructive reduction to practice of the claimed
invention with filing the instant application on April 1, 2004. App. Br. 15;
see also App. Br. 13-17; Reply Br. 3-6.
The Examiner has stated that the evidence submitted does not
establish the requisite diligence. Ans. 18-19 (indicating a declaration filed
pursuant to 37 C.F.R. § 1.131 (“a Rule 131 declaration”) on July 8, 2008,
was insufficient to establish diligence); see also Non-Final Rejection mailed
April 8, 2008, at pages 2-3 (indicating a Rule 131 declaration submitted on
January 7, 2008, was insufficient).
The Examiner and Appellants agree that Appellants are not entitled to
claim priority under 35 U.S.C. § 119 to the corresponding Japanese
application filed by Appellants on March 31, 2003. App. Br. 15; Ans. 19-
20. Appellants, however, contend that the Examiner erred by indicating the
evidence submitted failed to remedy the one-day discrepancy of the U.S.
filing date enabling a claim to the foreign application filed by Appellants
because the evidence was submitted to show diligence. Reply Br. 5
(presumably referring to Ans. 19); see also App. Br. 14.

ISSUE
Have Appellants presented sufficient evidence to establish they acted
diligently to reduce their invention to practice from prior to August 7, 2003
(the effective filing date of Higaki) until constructive reduction to practice of
the claimed invention with filing the instant application on April 1, 2004?

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ANALYSIS
Under 37 C.F.R. § 1.131, the critical period in which diligence must
be shown begins just prior to the effective date of the reference and ends
with the date of a reduction to practice, either actual or constructive (i.e.,
filing a United States patent application). See also In re Costello, 717 F.2d
1346, 1350 (Fed. Cir. 1983) (indicating filing an application in the United
States is construed as constructive reduction to practice of the invention as
of the time of filing the application). 37 C.F.R. § 1.131(b) indicates the
element of proof required to establish diligence:
The showing of facts shall be such, in character and weight, as
to establish . . . conception of the invention prior to the effective
date of the reference coupled with due diligence from prior to
said date to a subsequent . . . filing of the application. Original
exhibits of drawings or records, or photocopies thereof, must
accompany and form part of the affidavit or declaration or their
absence must be satisfactorily explained.
The evidence submitted for the purpose of antedating Higaki is a
“Declaration Under 37 C.F.R. § 1.131” by the inventors, dated December
27, 2007 (hereinafter, the “First Declaration”) and a “Declaration Under 37
C.F.R. § 1.131” by Mr. Susumu Terada, dated July 4, 2008 (hereinafter, the
“Second Declaration”). Mr. Terada is an employee of the Japanese patent
firm of Oshima & Narushima and represents the assignee of the instant
application. Second Decl. ¶ 1-2. The Second Declaration included a copy
of an order letter sent on January 8, 2004, purportedly from the assignee to
the Japanese patent firm requesting the filing of the instant application and
claiming priority to the corresponding Japanese patent application. Second
Decl. ¶ 5. The Second Declaration also included a copy of another order
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letter sent on March 4, 2004, from the Japanese patent firm to the U.S. firm
that filed the instant application on April 1, 2004. Second Decl. ¶ 6.
We agree with the Examiner (Ans. 19) that Appellants have not
presented convincing evidence to antedate Higaki. Appellants’ First
Declaration merely asserts that diligence was exercised without providing
evidence and so is insufficient, as the Examiner found (Non-Final Rejection
mailed April 8, 2008 at pages 2-3). Concerning diligence, Appellants’ First
Declaration states:
U.S. Publication No. 2004/0028260 to Higaki et al. ("Higaki")
filed August 7, 2003 and published February 12, 2004 is,
therefore, not prior art as to any aspects of U.S. Patent
Application Serial No. 10/814,343. Higaki's filing date and
publication date are after the filing date of Japanese Patent
Application No. 2003-094171 which relate to the subject matter
of the present application, U.S. Patent Application Serial No.
10/814,343. Therefore, the filing of Japanese Patent
Application No. 2003-094171 corresponding to the present
application establish conception of the invention prior to the
effective date of Higaki coupled with due diligence from prior
to said date to a subsequent filing of the U.S. Patent Application
Serial No. 10/814,343.
First Rule 131 Decl. ¶ 6.
Appellants argue that the Second Declaration provides evidence of the
requisite diligence because (i) the order letter to the Japanese patent firm
shows the Appellants’ intent to file the present application as of January 8,
2004, (ii) the order letter sent on March 4, 2004, to the firm that filed the
patent application shows continued diligence, and (iii) failure to file the
application until April 1, 2004, was the result of a “clerical error.” App. Br.
13-14; Reply Br. 3-6; Second Rule 131 Decl. ¶ 5-6.
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Even assuming2, without deciding, that Appellants are correct that the
evidence of the Second Declaration shows diligence from January 8, 2004 to
the filing date of the present application (i.e., constructive reduction to
practice), Appellants have failed to account for the entire critical period from
just prior to the effective date of Higaki (August 7, 2003) until January 8,
2004, when the order letter was sent to the Japanese patent firm.
Thus, we agree with the Examiner that there is a lack of evidence of
diligence during the critical period (Ans. 19).
Appellants also assert that the Examiner erred by evaluating
Appellants’ evidence of due diligence in light of the missed Paris
Convention deadline. Reply Br. 5 (stating “[t]he missing of the priority
deadline by one day is not evidence of a lack of diligence. The attempt in
the Office Action to connect the Paris Convention deadline to due diligence
is a clear legal and factual error.”). We do not view the Examiner’s
indication (Ans. 19) that Appellants’ evidence “fails to remedy the 1-day
discrepancy of the U.S. filing date” to enable a claim to the foreign
application as other than an attempt by the Examiner to respond completely
to Appellants’ arguments and is not reversible error. Additionally,
Appellants are directed to our previous discussion and other statements
made by the Examiner concerning Appellants’ lack of diligence. For

2 We also note, but leave aside for purposes of this analysis, that (i) the
Evidence Appendix of Appellants’ Appeal Brief indicates that no evidence
under 37 C.F.R. § 1.131 has been entered or will be relied on by the
Appellants in this appeal (App. Br. 31) (37 C.F.R. § 41.37(c)(1)(ix)) and
(ii) whether the declarant of the Second Declaration is a person authorized to
file a Rule 131 declaration (see 37 C.F.R. § 1.131).

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example, the Examiner indicates that the Second Declaration “has been
considered but is ineffective to overcome the Higaki reference
(2004/0028260 A1). [Appellants] failed to show diligence . . .” (Ans. 18)
and “[t]here appears to be a lack of diligence . . .” (Ans. 19).
Accordingly, Appellants have not persuasively shown that they acted
diligently to reduce their invention to practice from just prior to August 7,
2003 (the effective filing date of Higaki) until constructive reduction to
practice of the claimed invention with filing the instant application on April
1, 2004. We concur with the Examiner’s determination that Appellants have
failed to show their invention antedates Higaki.
Appellants have presented no arguments directed to the Examiner’s
factual findings of what Higaki teaches or makes obvious. See generally
App. Br. 12-19; Reply Br. 3-8. Appellants, however, argue that various
limitations recited by claim 1 are not shown by Kuno. App. Br. 17-19;
Reply Br. 7-8. Appellants’ arguments are not persuasive because they are
not consistent with the rejection in which the Examiner relied on Higaki for
the contested limitations. Ans. 5-7.
For the foregoing reasons, Appellants have not persuaded us of error
in the rejection of independent claim 1 and dependent claims 2 and 4-8, for
which Appellants refer to the previous arguments of claim 1 or repeat their
arguments concerning the submitted declarations. See App. Br. 19-22 and
26.

The Obviousness Rejection of Claim 3 over Higaki, Kuno, and Shinichi
Appellants refer to the previous arguments of claim 1, repeat the
arguments made in connection with claim 1, and assert that Shinichi does
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not cure the alleged deficiencies of Kuno. See App. Br. 22-23; Reply Br. 8.
The issues before us, then, are the same as those in connection with claim 1,
and we refer Appellants to our previous discussion. Also, based on the
previous explanation, we need not address whether Shinichi cures any
purported deficiency of Kuno. See App. Br. 23.
Accordingly, we are not persuaded of error in the rejection of claim 3.

The Obviousness Rejection of Claim 4 over Higaki, Kuno, and Ishii
In this rejection of claim 4, the Examiner relies on Ishii for an image
transmitting means transmitting the monitored state variable including a
current position of the robot. Ans. 12 (citing Ishii, col. 5, ll. 10-15). Ishii
describes a robot that floats. Ishii, Abstract. The portion of Ishii cited by
the Examiner describes (i) using information captured through an image
sensor 11 and an audio sensor 12 to detect the current position of the robot
10 and (ii) transferring the captured information externally through a
communications device 19 of the robot 10. Ishii, col. 5, ll. 10-15 (referring
to Fig. 1); see Ans. 12.
Appellants assert that the Kuno and Ishii references cannot be
combined because adding Ishii’s mechanism from a floating robot would
change the fundamental principles of Kuno’s operation in that Kuno’s
system could not be configured to add a mechanism allowing a person to
float in the water. App. Br. 25. In response, the Examiner indicates that
Ishii also describes a land-based embodiment. Ans. 30 (citing Ishii, col. 6, l.
48-col. 7, l. 10).
Based on Ishii’s disclosure, we disagree with Appellants that Ishii’s
techniques for detecting the current position of the robot and transferring the
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information through a communications device would change Kuno’s
principal of operation. Moreover, we note that the test of non-obviousness is
not whether one reference can be bodily incorporated into another, but rather
what the references, when considered together, would suggest to one of
ordinary skill in the art. See In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The Examiner’s proposed combination of Higaki, Kuno, and Ishii
predictably uses prior art elements according to their established functions—
an obvious improvement. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007).
Appellants also refer to the previous arguments of claim 1 and repeat
the arguments made in connection with claim 1. See App. Br. 23-24; Reply
Br. 8. We are not persuaded for the reasons discussed with respect to claim
1. Based on the previous explanation, we need not address whether Ishii
cures any purported deficiency of Kuno. See App. Br. 24-25.
We therefore sustain this rejection of claim 4.

CONCLUSION
The Examiner did not err in rejecting (1) claims 1, 2, and 4-8 under
§ 103 as unpatentable over Higaki and Kuno, (2) claim 3 under § 103 as
unpatentable over Higaki, Kuno, and Shinichi, and (3) claim 4 under § 103
as unpatentable over Higaki, Kuno, and Ishii.

ORDER
The Examiner’s decision rejecting claims 1-8 is affirmed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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