INTERNATIONAL BUSINESS MACHINES CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 19, 202014623345 - (D) (P.T.A.B. May. 19, 2020) Copy Citation 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. Appeal 2019-004557 Application 14/623,345 2 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 Appeal 2019-004557 Application 14/623,345 3 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.). Appeal 2019-004557 Application 14/623,345 4 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. Appeal 2019-004557 Application 14/623,345 5 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. Appeal 2019-004557 Application 14/623,345 6 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 Appeal 2019-004557 Application 14/623,345 7 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. Appeal 2019-004557 Application 14/623,345 8 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 Appeal 2019-004557 Application 14/623,345 9 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. Appeal 2019-004557 Application 14/623,345 10 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. Appeal 2019-004557 Application 14/623,345 11 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 Appeal 2019-004557 Application 14/623,345 12 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 Copy with citationCopy as parenthetical citation