FANUC CORPORATION

Patent Trials and Appeals Board

Jan 5, 2022

2020005327 (P.T.A.B. Jan. 5, 2022)

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. 14/155,619 01/15/2014 Shogo INOUE 201252-0081-00- US-508370 4169 55694 7590 01/05/2022 FAEGRE DRINKER BIDDLE & REATH LLP (DC) 1500 K STREET, N.W. SUITE 1100 WASHINGTON, DC 20005-1209 EXAMINER PARRY, CHRISTOPHER L ART UNIT PAPER NUMBER 2451 NOTIFICATION DATE DELIVERY MODE 01/05/2022 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): DBRIPDocket@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHOGO INOUE Appeal 2020-005327 Application 14/155,619 Technology Center 2400 Before JEAN R. HOMERE, JEREMY J. CURCURI, and GREGG I. ANDERSON, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-6, 8-11, 18-20, 23, and 24. Appeal Br. 1. Claims 2, 7, 12-17, 21 and 22 have been canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Fanuc Corporation. Appeal Br. 1. Appeal 2020-005327 Application 14/155,619 2 CLAIMED SUBJECT MATTER The claims are directed to a “[c]ontroller for transmitting information on machine or controller via email.” Title. Claim 1, reproduced below with disputed limitations emphasized, is illustrative of the claimed subject matter: 1. A machine comprising: at least one of a machine tool, an industrial machine, and a robot; a controller configured to control the at least one of the machine tool, the industrial machine, and the robot, the controller having a function of transmitting information on at least one of the controller and the at least one of the machine tool, the industrial machine, and the robot controlled by the controller from the controller to a terminal located at a distance from the controller via an e-mail, the controller including a memory and a processor; and a local area network (LAN) device and a router configured to connect the terminal to the controller, wherein the processor is configured to perform a method comprising: detecting an event that has occurred in at least one of the controller and the at least one of the machine tool, the industrial machine, and the robot, composing event information containing at least one event that has occurred in the at least one of the controller and the at least one of the machine tool, the industrial machine, and the robot; storing, in the memory, the composed event; adding, when a new event occurs after the event information is composed, the new event to the event information stored in the memory; Appeal 2020-005327 Application 14/155,619 3 updating, when the event contained in the event information stored in the memory is changed after the event information is composed, the changed event contained in the event information stored in the memory; deleting, when the event is canceled after the event information is composed, the cancelled event from the event information stored in the memory; receiving an e-mail acquisition request from the terminal; acquiring the event information stored in the memory based on the received e-mail acquisition request; composing an e-mail that contains the acquired event information based on the received e-mail acquisition request; and transmitting the composed e-mail containing the acquired event information directly to the terminal according to one of a post office protocol (POP) or an Internet mail access protocol (IMAP), via the LAN device and the router without use of an Internet network and a mail server, based on the received e-mail acquisition request. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Kasiraj US 5,127,087 June 30, 1992 Nakazawa US 2003/0229414 A1 Dec. 11, 2003 Powell US 2005/0289190 A1 Dec. 29, 2005 Trepina US 2010/0023156 A1 Jan. 28, 2010 Yi Li et al., An Email Server Optimized for Storage Issues, 2011 International Joint Conference of IEEE TrustCom-11/IEEE ICESS- 11/FCST-11 1437-1443 (2011) (“Li”) REJECTIONS Claims 1, 3, 4, 6, 9, 10, 18, and 19 are rejected under 35 U.S.C. Appeal 2020-005327 Application 14/155,619 4 § 112(b) as indefinite. Final Act. 4. Claims 1, 3-6, 9-11, 23, and 24 are rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Trepina, Nakazawa, Kasiraj, and Li. Final Act. 6- 14. Claims 8 and 18-20 are rejected under pre-AIA 35 U.S.C. § 103(a) as obvious over Trepina, Nakazawa, Kasiraj, Li, and Powell. Final Act. 14-18. OPINION The Indefiniteness Rejection of Claims 1, 3, 4, 6, 9, 10, 18, and 19 The Examiner concludes claim 1 is indefinite. Final Act. 4. In particular, the Examiner determines “transmitting . . . according to one of a post office protocol (POP) or an Internet mail access protocol (IMAP) . . . without use of an Internet network and a mail server” (claim 1) makes the claim indefinite because “both the POP and IMAP protocols are used by email clients to retrieve email messages from a mail server. However, the claim limitation also indicates that the transmission is performed without the use of an Internet network and a mail server.” Final Act. 4. Appellant presents the following principal argument: [A]s shown in the figures and described in the specification, e- mails are transmitted “without use of an Internet network and a mail server” because they are transmitted via the LAN device. Moreover, the disclosure makes clear that those e-mails are transmitted according to either the POP or IMAP protocols. Thus, contrary to the Examiner’s assertions in the § 112 rejection, there are no inconsistencies in the claims. Appeal Br. 6. In response, the Examiner explains as follows: Appeal 2020-005327 Application 14/155,619 5 [B]oth the Post Office Protocol (POP) and Internet Message Access Protocol (IMAP) are associated with a mail server. It is unclear how these protocols would work without a mail server. Furthermore, Applicant’s figures 9 and 10 show that the controller performs or acts as a “POP server” and “IMAP server.” The Examiner submits that the controller acting as either a “POP server” or an “IMAP server” deviates from the Applicant’s assertion that the transmission is not using a “mail server” when the controller itself performs or acts as a “mail server.” Ans. 4. In reply, Appellant argues, “[u]se of a protocol does not require use of an Internet network or mail server.” Reply Br. 1. “[W]ith reference to Figs. 3 and 5, the transmission-side equipment is omitted from embodiments according to claim 1.” Reply Br. 3. “[T]he transmission of e-mail recited in claim 1 and shown in Figs. 3 and 5 occurs entirely between the reception- side devices, thereby eliminating the delivery of e-mail from a transmission- side device to a reception-side device.” Reply Br. 3. We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We do not see any error in the Examiner’s conclusion of indefiniteness. We agree with the Examiner’s determination that “transmitting . . . according to one of a post office protocol (POP) or an Internet mail access protocol (IMAP) . . . without use of an Internet network and a mail server” (claim 1) is unclear. Appellant’s arguments are unavailing because we interpret “mail server” as a device providing a mail service according to a mail protocol. See Spec. 23:6-9 (“FIG. 9 is a diagram for describing an Appeal 2020-005327 Application 14/155,619 6 example of the communication sequence of transmitting an e-mail from the controller 100 which is a POP server to a terminal which is a POP client.”). Given our interpretation of “mail server,” the claim language describes “transmitting . . . according to one of a post office protocol (POP) or an Internet mail access protocol (IMAP) . . . without use of” a device providing mail service according to a mail protocol, which is unclear. We, therefore, sustain the Examiner’s rejection under 35 U.S.C. § 112(b) of claim 1. We also sustain the Examiner’s rejection under 35 U.S.C. § 112(b) of claims 3, 4, 6, 9, 10, 18, and 19, which are not separately argued with particularity. The Obviousness Rejection of Claims 1, 3-6, 9-11, 23, and 24 over Trepina, Nakazawa, Kasiraj, and Li The Examiner finds Trepina, Nakazawa, Kasiraj, and Li teach all limitations of claims 1, 3-6, 9-11, 23, and 24. Final Act. 6-14; see also Ans. 5-9. Appellant presents various arguments. Appeal Br. 8-15; see also Reply Br. 3-7. It is well settled that “[b]efore considering the rejections . . . we must first [determine the scope of] the claims . . . .” In re Geerdes, 491 F.2d 1260, 1262 (CCPA 1974). In the present case, for reasons explained above, the metes and bounds of the claim protection being sought cannot be reasonably ascertained. It would be improper, then, to speculate as to the meaning of the claims. A prior art rejection of a claim, which is so indefinite that “considerable speculation as to [the] meaning of the terms employed Appeal 2020-005327 Application 14/155,619 7 and assumptions as to the scope of such claims” is needed, is likely imprudent. See In re Steele, 305 F.2d 859, 862, (CCPA 1962) (holding that the Examiner and the Board were wrong in relying on what, at best, were speculative assumptions as to the meaning of the claims and in basing a rejection under 35 U.S.C. § 103 thereon). We, therefore, summarily reverse the Examiner’s rejection under pre- AIA 35 U.S.C. § 103(a) of claims 1, 3-6, 9-11, 23, and 24. The Obviousness Rejection of Claims 8 and 18-20 over Trepina, Nakazawa, Kasiraj, Li, and Powell The Examiner finds Trepina, Nakazawa, Kasiraj, Li, and Powell teach all limitations of claims 8 and 18-20. Final Act. 14-8. Appellant argues “[c]laims 8 and 18-20 depend from claim 6 and recite the same combination of allowable features recited in claim 6 as well as additional features that define over the applied art.” Appeal Br. 15. For the same reasons discussed above, we, therefore, summarily reverse the Examiner’s rejection under pre-AIA 35 U.S.C. § 103(a) of claims 8 and 18-20. CONCLUSION The Examiner’s decision to reject claims 1, 3-6, 8-11, 18-20, 23, and 24 is affirmed in part. Appeal 2020-005327 Application 14/155,619 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 6, 9, 10, 18, 19 112(b) Indefiniteness 1, 3, 4, 6, 9, 10, 18, 19 1, 3-6, 9- 11, 23, 24 103(a) Trepina, Nakazawa, Kasiraj, Li 1, 3-6, 9- 11, 23, 24 8, 18-20 103(a) Trepina, Nakazawa, Kasiraj, Li, Powell 8, 18-20 Overall Outcome 1, 3, 4, 6, 9, 10, 18, 19 5, 8, 11, 20, 23, 24 TIME PERIOD FOR RESPONSE 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