INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

May 19, 2020

2019004557 (P.T.A.B. May. 19, 2020)

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.
14/623,345 02/16/2015 Robert R. Friedlander END920110099US2 1181
79230 7590 05/19/2020
Law Office of Jim Boice
3839 Bee Cave Road
Suite 201
West Lake Hills, TX 78746
EXAMINER
SATANOVSKY, ALEXANDER
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
05/19/2020 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):
Jennifer@BoiceIP.com
Jim@BoiceIP.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte ROBERT R. FRIEDLANDER
and JAMES R. KRAEMER
____________
Appeal 2019-004557
Application 14/623,345
Technology Center 2800
____________
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and
MICHAEL G. McMANUS, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–20 of Application 14/623,345, which

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
14/623,345 filed Feb. 16, 2015; the Final Office Action dated May 11, 2018
(“Final Act.”); the Appeal Brief filed Oct. 8, 2018 (“Appeal Br.”); the
Examiner’s Answer dated Mar. 28, 2019 (“Ans.”); and the Reply Brief filed
May 21, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
International Business Machines Corporation. Appeal Br. 2.
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constitute all the claims pending in this application. We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
The subject matter of the invention concerns monitoring conditions of
shipping containers on a cargo ship. Spec. ¶ 1. A vibration sensor affixed to
an intermodal shipping container detects mechanical vibration energy and
generates a frequency plus amplitude vibration pattern. Spec. ¶¶ 2, 3. A
baseline composite vibration pattern is generated by “combining” two or
more frequency plus amplitude vibration patterns by two or more of the
multiple vibration sensors. Spec. ¶ 3. Subsequent readings from multiple
vibration sensors generate a new composite vibration pattern. Spec. ¶ 4. If
the new composite vibration pattern is different beyond a predefined range, a
process matches the pattern with a known composite vibration pattern to
identify a cause of the new pattern. Spec. ¶ 6.
Claim 1, reproduced below from the Claims Appendix of the Appeal
Brief, illustrates the claimed subject matter:
1. A method comprising:
a processor establishing a baseline composite vibration
pattern from readings generated by multiple vibration sensors,
wherein each vibration sensor, of the multiple vibration sensors,
is a uniquely-identified vibration sensor that has been affixed to
one of multiple intermodal shipping containers, wherein each
vibration sensor comprises a vibration sensor for detecting
mechanical vibration, wherein the multiple intermodal shipping
containers have been loaded onto a cargo ship, and wherein the
baseline composite vibration pattern is generated by combining
two or more frequency plus amplitude vibration patterns
generated by two or more of the multiple vibration sensors that
are affixed to the multiple intermodal shipping containers;
the processor taking subsequent readings from the
multiple vibration sensors to generate a new composite
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vibration pattern, wherein the new composite vibration pattern
is generated by combining two or more new frequency plus
amplitude vibration patterns generated by two or more of the
multiple vibration sensors that are affixed to the multiple
intermodal shipping containers;
the processor receiving humidity readings from humidity
sensors affixed to interiors of each of the multiple intermodal
shipping containers;
the processor, in response to the new composite vibration
pattern being different, beyond a predefined range, from the
baseline composite vibration pattern, matching the new
composite vibration pattern with a known composite vibration
pattern in order to identify a cause of the new composite
vibration pattern for a particular intermodal shipping container
as being a breach to an integrity of a seal around a door of the
particular intermodal shipping container from the multiple
intermodal shipping containers;
the processor further determining that the integrity of the
seal around the door of the particular intermodal shipping
container from the multiple intermodal shipping containers has
been breached based on an increase in the humidity readings
from a humidity sensor affixed to the particular intermodal
shipping container; and
in response to determining that the integrity of the seal
around the door of the particular intermodal shipping container
from the multiple intermodal shipping containers has been
breached, resealing the particular intermodal shipping container
such that contents of the particular intermodal shipping
container are not damaged by an increase in an interior
humidity level of the particular intermodal shipping container.
Appeal Br. 31–32 (Claims App.).
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REJECTIONS3,4
The Examiner rejects the following claims under 35 U.S.C.§ 112(a) as
failing to comply with the enablement requirement: (1) claims 1–20 for
failing to enable “baseline composite vibration pattern,” “new composite
vibration pattern,” and “matching the new composite vibration pattern with a
known composite vibration pattern in order to identify a cause of the new
composite vibration pattern for a particular intermodal shipping container;”
and (2) claims 6 and 14 for failing to enable “vibration/chemical pattern.”
Final Act. 10–13.
DISCUSSION
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),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections.

3 In the Answer, the Examiner withdrew rejections of claims 1–20 under
35 U.S.C. § 101, and of claims 9–16 and 20 under 35 U.S.C. § 112(a) for
lacking written description. Ans. 3–4.
4 The Examiner withdrew the rejection of claim 5 (and 13) after interpreting
“incorporating acoustic readings from acoustic sensors in the multiple
vibration sensors” to mean that the acoustic sensors are in the multiple
vibrations sensors, and the acoustic readings are incorporated into the
baseline composite vibration pattern to create a baseline vibration/acoustic
composite pattern. Ans. 19.
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Rejection of claims 1–20 as lacking enablement
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” Trustees of Boston Univ. v. Everlight
Elec. Co., Ltd., 896 F.3d 1357, 1362 (Fed. Cir. 2018) (quoting Genentech,
Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (alteration in
original) (quoting In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993))).
Enablement is a question of law based upon underlying factual findings.
Wright, 999 F.2d at 1561. “[T]he PTO bears an initial burden of setting
forth a reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by the
description of the invention provided in the specification of the
application. . . .” Id. at 1561–62. Once the Examiner has weighed all the
evidence and established a reasonable basis to question the enablement
provided for the claimed invention, the burden falls on the applicant to
present persuasive arguments, supported by suitable proofs where necessary,
that one skilled in the art would be able to make and use the claimed
invention using the application as a guide. In re Brandstadter, 484 F.2d
1395, 1406–07 (CCPA 1973).
In the instant case, the Examiner meets the initial burden of providing
a reasonable explanation as to why claim terms common to all pending
claims are not adequately enabled by the Specification. In particular, the
Examiner determines that the Specification does not enable “composite
vibration pattern”—either “baseline,” “new,” or “known”—or “matching the
new composite vibration pattern with a known composite vibration pattern
in order to identify a cause of the new composite vibration pattern for a
particular intermodal shipping container.” Final Act. 10.
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Whether undue experimentation is required is a conclusion reached by
weighing many factual considerations. In re Wands, 858 F.2d 731, 736–37
(Fed. Cir. 1988). Factors to be considered include: (1) the quantity of
experimentation necessary, (2) the amount of direction or guidance
presented, (3) the presence or absence of working examples, (4) the nature
of the invention, (5) the state of the prior art, (6) the relative skill of those in
the art, (7) the predictability or unpredictability of the art, and (8) the breadth
of the claims. Id.; compare MPEP 2164.01(a). These factors are illustrative,
not mandatory. Streck, Inc. v. Research & Diagnostic Sys., Inc., 665 F.3d
1269, 1288 (Fed. Cir. 2012).
The Examiner provides factual findings that adequately support the
determination that the claims are not enabled.
Factor (1) (the quantity of experimentation necessary): The Examiner
finds that it is known in the art that the vibration dynamics of a container on
a ship deck are very complicated, and include both low-level continuous
type vibrations characteristic of ships operating in calm water (the result of
engine and propeller excitations), and higher levels of vibration that are
characteristic of rough seas (the result of a ship riding up and down on
waves or swells, waves impacting the ship, the ship slamming against the
water). Final Act. 11–12 (citing An Assessment of the Common Carrier
Shipping Environment, General Technical Report FPL 22, USDA (1979);
see also Ans. 15. The Examiner finds that deck vibrations are substantially
different throughout a deck structure, being higher at the beginning and end
of a deck, and as much as three times lower in the middle of a deck. Final
Act. 12 (citing Container Handbook, Section 2.3.3 (GDV Berlin 2002–
2020)). The Examiner finds that the disclosure does not convey to one of
ordinary skill in the art which vibrations substantially affect the composite
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vibration patterns. Id. The Examiner concludes that significant uncertainty
would exist in establishing both baseline and new composite vibration
patterns due to the variability of the vibrations that could be detected at any
container. Id.; see also Ans. 15–16 (noting issues with collecting reliable
data of a random process such as ship movement, and for matching new and
known composite vibration patterns supposedly generated under the “same”
conditions). The Examiner determines that the disclosure does not convey
to one of ordinary skill in the art how to establish the cause of a new
composite vibration pattern because explanations, examples, and
experimental data are lacking from the disclosure. Final Act. 12.
The Examiner supports the finding that a very substantial amount of
experimentation would be required to make and use the claimed invention.
As a preliminary matter, a skilled artisan would need to determine which
operational conditions are to be considered and how to obtain data on them,
define acceptable ranges, and establish baseline composite vibration
patterns.
Baseline composite vibration patterns are “arbitrarily generated at
some point in time during a voyage of the cargo ship, or [] may be generated
at a time that other information sensors/analysis indicates that the
operational conditions . . . are all within predefined acceptable ranges.”
Spec. ¶ 34. The Specification, thus, discloses what such composite vibration
patterns are, but not how to make and use them. “Known” composite
vibration patterns are associated with a particular cause based on “historical,
empirical, and/or simulated observations” (Spec. ¶ 36), but no information is
provided that further conveys how to develop or create such vibration
patterns that are necessary to make and use the claimed invention.
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Factor (2) (the amount of direction or guidance presented): Almost no
direction or guidance is provided in the Specification.
The Examiner finds that Fig. 7 provides the main support for
“composite vibration pattern,” but the figure is a schematic description that
does not describe any specific embodiment, thus it is not clear what specific
composite vibration pattern the curves in Fig. 7 represent. Final Act. 10.
The Examiner finds that the disclosure is silent on how the frequency plus
amplitude data for individual containers are combined to result in a
“composite vibration pattern.” Id.; Ans. 11–12. The Specification does not
disclose or discuss any technique for obtaining the composite vibration
patterns. Final Act. 10. The Examiner finds that there is no disclosure of
how vibration of individual containers at different locations on the deck
subjected to different forces caused by a vibrating ship deck is used to
identify an event affecting a particular container or damage to a non-
mechanical structure. Id. at 11.
Appellant argues that paragraph 34 of the Specification discloses that
the frequency plus amplitude (F+A) vibration patterns from two different
smart sensors are summed. Appeal Br. 21. However, neither the word
“sum” nor any analogous word appears in the Specification in relation to
creating composite vibration patterns.
The Examiner finds that different baseline composite vibration
patterns would be expected to be required for different containers at different
physical locations on ship, and for different weather conditions—but “the
specification does not provide sufficient guidance which would enable one
of ordinary skill to address these kinds of concerns in practice.” Ans. 14.
The Examiner finds that the claimed invention requires collecting reliable
data on random processes, including such things as ship movement that must
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later be matched with known patterns. Id. The Examiner finds that the
Specification fails to provide any discussion, explanation, or example of
how “varying conditions . . . are accounted for, such that the known and new
vibration patterns can be accurately compared to one another.” Id. at 15
(quoting Appeal Br. 22).
Appellant contends that the Specification “makes it clear that the
‘baseline patterns’ take into account ship movement as the ship is under
way,” citing to paragraphs 34, 36, and 45. Appeal Br. 22. We note,
however, that the cited paragraphs of the Specification merely disclose that
processing logic generates composite vibration patterns, and baseline
patterns may be “arbitrarily generated at some point in time during a
voyage” and when “other information sensors/analysis” indicates that
operational conditions are “within predefined acceptable ranges.” See Spec.
¶¶ 34, 36, 45. Such broad and vague disclosures do not provide sufficient
direction or guidance to one of ordinary skill in the art to determine how the
processing logic “generates” the composite vibration patterns, or the
appropriate time, “other information,” operational conditions, or predefined
acceptable ranges necessary to implement the claimed invention.
The claims require that “the new composite vibration pattern [is]
different, beyond a predefined range, from the baseline composite vibration
pattern.” However, the Specification provides no further information on the
“predefined range.” In addition, the claims require “matching the new
composite vibration pattern with a known composite vibration pattern,” but
the Specification is silent on implementing the matching. See generally,
Spec.
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Factor (3) (the presence or absence of working examples): The
Examiner finds that the ’345 Application lacks any working examples. Ans.
18.
Neither the Examiner nor Appellant address Factors 4 through 8 of
Wands. Given the facts of this case, we do not consider Factors 4 through 8
relevant to our decision. See Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927
F.2d 1200, 1213 (Fed. Cir. 1991) (noting that the Wands factors “are
illustrative, not mandatory. What is relevant depends on the facts.”).
In the Reply Brief, Appellant argues that frequency plus amplitude
vibration patterns are known in the art, thus generating such a pattern is
enabled. Reply Br. 3. Appellant then argues that the Examiner merely
speculates in finding that combining two or more vibration patterns would
make it more difficult to distinguish a sought difference. Id.
We disagree. The issue is not whether generating a frequency plus
amplitude vibration pattern is enabled, but whether generating a composite
pattern from data collected under constantly varying conditions with
vibration dynamics known to be very complicated is enabled. The Examiner
reasons that undue experimentation would have been required due to lack of
disclosure in the Specification.
The attorney argument proffered by Appellant is insufficient to
overcome the evidence and reasoning provided by the Examiner in support
of the rejection. See Estee Lauder Inc. v. L’Oréal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997) (Counsel’s argument “cannot take the place of evidence
lacking in the record.” (Citation omitted.)). Because Appellant’s argument
does not persuasively establish harmful Examiner error, we sustain the
Examiner’s rejection of claims 1–20 as lacking enablement.
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Rejection of claims 6 and 14 as lacking enablement
The Examiner also rejects claims 6 and 14 as lacking enablement of
how a chemical environment condition can be tracked down to a particular
container when all of the sensors’ readings are joined together in a new
composition pattern. Final Act. 13; Ans. 19–20. The Examiner finds that
one of ordinary skill in the art would not know how a spill of a chemical
substance or a deck or in a container would cause a meaningful, identifiable
change in the detected composite vibrations. Ans. 20. The Examiner finds
that no examples are provided. Id.
Appellant contends that paragraphs 37 and 41 of the Specification are
enabling. Appeal Br. 25.
Paragraph 37 states, “a uniquely-identified smart sensor is affixed to
one or more of multiple intermodal shipping containers []. Each uniquely-
identified smart sensor identifies the intermodal shipping container to which
it is attached, as well as the location of where that particular intermodal
shipping container is positioned on the cargo ship.” Spec. ¶ 37. Paragraph
41 states, “a processor can incorporate chemical readings from these
chemical sensors in the smart sensors in order to modify the baseline
composite vibration pattern, thus creating a baseline vibration/chemical
composite pattern.” Spec. ¶ 41.
The Examiner’s findings convey at least that a large quantity of
experimentation would be necessary to implement the claimed invention, the
Specification fails to provide sufficient direction or guidance, and the
Specification provides no working examples. See Ans. 20. Thus, the
Examiner weigh Wands factors, and meets the initial burden of setting forth
a reasonable explanation as to why the scope of protection provided by
claims 6 and 14 is not adequately enabled by the Specification. Wright, 999
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F.2d at 1561–62. The burden therefore shifts to Appellant to provide
argument and proof. Brandstadter, 484 F.2d at 1406–07. Appellant’s
reliance on conclusory statements in the Specification does not meet this
burden.
We sustain the rejection of claims 6 and 14 as lacking enablement.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–20 112(a) Enablement 1–20
6, 14 112(a) Enablement 6, 14
Overall
Outcome
1–20
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).
AFFIRMED