KING SAUD UNIVERSITY

Patent Trials and Appeals Board

Oct 30, 2020

2020000206 (P.T.A.B. Oct. 30, 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.
15/916,198 03/08/2018 MOHAMMED MAHDI AHMED AL-GABRI 32809.64 8028
37833 7590 10/30/2020
Richard C. Litman
Nath, Goldberg & Meyer
112 S. West Street
Alexandria, VA 22314
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
10/30/2020 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):
litman@4patent.com
tharkins@nathlaw.com
uspto_nva@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOHAMMED MAHDI AHMED AL-GABRI,
MANSOUR MOHAMMED A. ALSULAIMAN,
HASSAN ISMAIL H. MATHKOUR,
MOHAMED ABDELKADER BENCHERIF,
MOHAMMED FAISAL ABDULQADER NAJI,
MOHAMED AMINE MEKHTICHE, GHULAM MUHAMMAD, and
WADOOD ABDUL
____________

Appeal 2020-000206
Application 15/916,198
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Jan. 23, 2019, hereinafter “Final

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. King Saud University is identified as the real party in interest
in Appellant’s Appeal Brief (filed May 13, 2019, hereinafter “Appeal Br.”).
Appeal Br. 3.
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Act.”) rejecting claims 1, 3, 5, and 7–15.2 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates “to a portable robot for two-way
communication with the hearing-impaired.” Spec. para 1.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A portable robot for two-way communication between a
non-hearing impaired user and a hearing-impaired user, the
portable robot comprising:
a base;
a first connection;
a torso mounted on the base via the first connection, the
torso having a generally planar triangular configuration
including a front, a back, a bottom, a left top, a right top and
a center top;
a left arm and a first shoulder joint, the left arm having a
proximate end and a distal end, the proximate end being
mounted to the left top of the torso via the first shoulder
joint, the left arm including a first elbow joint;
a left hand and a first wrist joint, the left hand being
mounted on the distal end of the left arm via the first wrist
joint, the left hand having a first little finger, a first ring
finger; a first middle finger, a first index finger and a first
thumb;

2 Claims 2, 4, 6, and 16–19 are canceled. Supplemental Appeal Brief (filed
June 3, 2019, hereinafter “Suppl. Appeal Br.”) 5, 6, 10.
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at least one first servo motor and a first servo controller
connected to the first servo motor, the fingers each being
connected to and moved by the at least one first servo motor
as controlled by the first servo controller;
a right arm and a second shoulder joint, the right arm
having a proximate end and a distal end, the proximate end
being mounted to the right top of the torso via the second
shoulder joint, the right arm including a second elbow joint;
a right hand and a second wrist joint, the right hand being
mounted on the distal end of the right arm via the second
wrist joint, the right hand including a second little finger, a
second ring finger; a second middle finger, a second index
finger and a second thumb;
at least one second servo motor and a second servo
controller, the fingers each being connected to and moved
by the at least one second servo motor as controlled by the
second servo controller;
a neck joint;
a head rotatably mounted on the center top of the torso
via the neck joint, the head having a front surface facing the
hearing impaired user, a first side surface, a second side
surface, a first display screen mounted on the front surface, a
3D camera mounted on the front surface, a robot
microphone mounted on the front surface, a first robot
speaker mounted on the first side surface and a second robot
speaker mounted on the second side surface;
a housing mounted on the back of the torso, the housing
having a second display screen mounted thereon and facing
the non-hearing impaired user; and
a control system including a vision-based active
recognition module, a speech processing module having a
text-to-speech module and a speech-to-text module, and a
robot control and sign language generation module; wherein:
the vision-based active recognition module receives a
video signal from the 3D camera and compares gestures and
facial expressions in the video signal to video databases to
translate the gestures and facial expressions of the hearing
impaired user to a translated text, wherein the translated text
is displayed on the second display screen;
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the text-to-speech module receives the translated text
from the vision-based active recognition module and
synthesizes the translated text into synthesized speech;
the synthesized speech is sent to the first and second
speakers;
the robot microphone receives an audio signal from the
non-hearing impaired user and sends the audio signal to the
speech-to-text module;
the speech-to-text module segments any speech detected
in the audio signal into speech segments;
the segments are recognized as their corresponding
phonemes by comparing the segments with a
segment/phoneme speech database;
the corresponding phonemes are concatenated into
concatenated text;
the concatenated text is sent to the robot control and sign
language generation module;
the robot control and sign language generation module
controls: the first display screen to provide facial
expressions associated with the concatenated text; and the
first and the second servo controllers to provide at least hand
and finger movements associated with the concatenated text.

See Suppl. Appeal Br. 3–5

REJECTIONS3

I. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C.
§ 112(b) as being indefinite.

3 The Examiner has withdrawn the rejections of claim 5 under 35 U.S.C.
§§ 112(a) and 112(b). See Examiner’s Answer (dated Aug. 8, 2019,
hereinafter “Ans.”) 7; Final Act. 3, 4.

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II. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C.
§ 112(a) as failing to comply with the written description
requirement.
III. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C.
§ 101 and Section 33(a) of the American Invents Act as being
directed to, or encompassing, a human organism.

ANALYSIS
Rejection I—Indefiniteness
Claims Directed to Both an Apparatus and a Method
The Examiner first finds that independent “claim 1 recites a product
(i.e., portable robot), but also recite[s] a process (i.e., receives a video signal;
receives the translated text; receives an audio signal; segments any speech;
controls).” Final Act. 3. Thus, according to the Examiner, “[b]ecause
Applicant is claiming two separate statutory classes together in a single
claim, claim 1 and the dependent claims thereof are deemed indefinite.” Id.
In response, Appellant argues that the recited process steps “are
merely functional statements of the corresponding structure.” Appeal Br.
16.
It is well settled that a claim reciting both an apparatus and a method
of using that apparatus is indefinite. See, e.g., IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). In this case,
however, although we appreciate the Examiner’s concern that “claim [1]
recites the step[s] in [the] present tense” and does not include “a linking
phrase (e.g., configured to” or “for”),” nonetheless, we agree with Appellant
that the recited steps do not describe a method (process) of operation of the
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claimed portable robot, but rather, represent functional limitations, that is, a
description of the function of the apparatus (product). See Appeal Br. 16.
For example, the limitations “receives a video signal from the 3D
camera and compares gestures and facial expressions in the video signal to
video databases to translate the gestures and facial expressions of the
hearing impaired to a translated text” that is “displayed on the second
display screen” describe how the “vision-based active recognition module”
of the portable robot functions. See Suppl. Appeal Br. 4 (emphasis added).
Moreover, as discussed infra, the Examiner finds that the limitation of “a
vision-based active recognition module” invokes 35 U.S.C. § 112(f), and,
thus, the disputed limitations noted above merely describe the function of
the “vision-based active recognition module.”
Accordingly, for the foregoing reasons, we agree with Appellant that
“[t]wo different statutory classes are not being indefinitely intertwined” in
claim 1, and, thus, we are not persuaded that claim 1 recites both an
apparatus (product) and a method. See Appeal Br. 16, 17.

Indefinite Claim Language
The Examiner further finds that “the limitation[s] of ‘the synthesized
speech is sent’, ‘the segments are recognized’, and ‘the corresponding
phonemes are concatenated’” of claim 1 are indefinite because “[t]he claim
does not specify what component (element) performs these functions.” Final
Act. 4.
In response, Appellant argues that the disputed limitations “are merely
functional statements of the corresponding structure.” Appeal Br. 17.
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We appreciate that the disputed limitations are functional in nature;
however, it is not clear which component of the claimed portable robot
performs the recited function. Even though Appellant’s Specification
describes text-to-speech module 602 as sending synthesized speech to
speaker 111 (see Spec. para. 39, Fig. 9), we must be careful not to read a
particular embodiment appearing in the written description into the claim if
the claim language is broader than the embodiment. See Superguide Corp.
v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, we
agree with the Examiner that claim 1 “does not identify if any of the . . .
[claimed] components performs these steps, or if they are performed by
another component [of the claimed portable robot] or by hand.” Ans. 5. In a
similar manner, it is not clear which of the components (elements) of the
claimed portable robot perform the recited functions of “the segments are
recognized” and “the corresponding phonemes are concatenated” of claim 1.
See Suppl. Appeal Br. 4–5. Accordingly, we agree with the Examiner that
such limitations render independent claim 1 indefinite. See Ans.10.

Means-plus-function
The Examiner interprets the limitations of a “control system including
a vision-based active recognition module,” a “speech processing module
having a text-to-speech module and a speech-to-text module,” and “a robot
control and sign language generation module” as invoking 35 U.S.C.
§ 112(f) because “they use generic placeholders (i.e., module) without any
corresponding structure or functional limitations to invoke 112(f).” Final
Act. 2. The Examiner further finds that “[t]he language preceding the term
‘module’ . . . is not a structural modifier, but rather merely describes the
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intended use or result.” Id. Thus, according to the Examiner, as “it is
unclear the metes and bounds of these limitations,” independent claim 1 is
indefinite. Id.
In response, Appellant argues that the features of means-plus-function
limitations noted above “are well-understood, routine, and conventional in
the art as understood by a person of ordinary skill,” and, thus, “there is no
need to describe them in detail in the [S]pecification.” Appeal Br. 15 (citing
Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)). As
evidence that a “detailed description is not essential for a proper
understanding of the invention,” Appellant points to paragraphs 34–41 and
Figures 6–11 of the Specification, US Patents 5,857,099 (issued Jan. 5,
1999, hereinafter “Mitchell”), 8,538,386 B2 (issued Sept. 17, 2013,
hereinafter “May”), 8,566,075 B1 (issued Oct. 22, 2013, hereinafter
“Bruner”), 8,831,279 B2 (issued Sept. 9, 2014, hereinafter “Rodriguez”),
9,800,955 B2 (issued Oct. 24, 2017, hereinafter “An”), and Maliki et al.,
Robotic Hands to Teach Sign Language, 30th Florida Conference on Recent
Advances in Robotics, May 11–12, 2017, Florida Atlantic University, Boca
Raton, Florida (hereinafter “Maliki”). See Appeal Br. 15
At the outset, we note that generic terms such as “mechanism,”
“element,” “device,” and other nonce words that reflect nothing more than
verbal constructs may be used in a claim in a manner that is tantamount to
using the word “means” because they “typically do not connote sufficiently
definite structure” and therefore may invoke section 112, para. 6. See Cole
v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (“To invoke
[35 U.S.C. § 112, ¶ 6], the alleged means-plus-function claim element must
not recite a definite structure which performs the described function.”).
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Here, although independent claim 1 does not use the term “means,”
nonetheless, claim 1 includes the non-structural generic term “module.” See
Suppl. Appeal Br. 4 (Claims App.). Furthermore, use of the phrases “vision-
based active recognition,” “speech processing,” “text-to-speech,” “speech-
to-text,” and “robot control and sign language generation” do not modify the
term “module” to recite sufficiently definite structure to preclude the
invocation of 35 U.S.C. § 112(f), but merely describe the function of the
“module.”4
Accordingly, for the foregoing reasons, we construe the limitations of
“a vision-based active recognition module,” “a speech processing module
having a text-to-speech module and a speech-to-text module,” and “a robot
control and sign language generation module,” as recited by independent
claim 1, as invoking 35 U.S.C. § 112(f), and, thus, as being limited to “the
structure, materials, or acts described in the [S]pecification . . .
corresponding to the claimed function and equivalents thereof.” Williamson,
792 F. 3d at 1347–48 (citing Northrop Grumman Corp. v. Intel Corp., 325
F.3d 1346, 1350 (Fed. Cir. 2003)). The proper test for meeting the
definiteness requirement is that the corresponding structure (or material or
acts) of a means- (or step-) plus-function limitation must be disclosed in the
Specification itself in such a manner that a person of ordinary skill in art
would readily understand what structure (or material or acts) will perform

4 For example, although the function “to translate the gestures and facial
expressions of the hearing impaired user to a translated text” is performed by
the “vision-based active recognition module,” the generic act of “compares
gestures and facial expressions in the video signal to video databases” is not
sufficient to impart structure. See e.g., Suppl. Appeal Br. 4.
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the recited function. See e.g., Atmel Corp. v. Information Storage Devices,
Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999).
Firstly, we agree with the Examiner that Appellant’s “[S]pecification
is silent as to any . . . definition” of the disputed means-plus-function
limitations noted above “either by hardware structure or software
algorithm.” Id. at 5. The Examiner is correct that paragraphs 34–41 and
Figures 6–11 of the Specification “merely repeat[] the above [means-plus-
function] limitations in question as generic placeholders, without further
defining them with any specificity.” Final Act. 6.
Specifically, Appellant’s Figures 6–11 “are essentially black box
schematics with no explanation of the underlying operations being
performed, and . . . [paragraphs 34–41 of the] specification describe[] the
features in the same generic nature as claimed.” Ans. 8 (emphasis added).
Moreover, Appellant’s mere citation of paragraphs 34–41 and Figures 6–11
of the Specification (see Appeal Br. 15) fails to adequately explain what
corresponding “structure is provided in these passages and drawings, nor
how these passages or drawings provide sufficient corresponding structure,
materials, or acts to accomplish the result-based limitations performed by the
various modules.” Ans. 8.
For example, even though Appellant’s Specification describes Figure
8 as a “flowchart 800 of the functions of the speech-to-text (STT) module”
(see Spec. para. 38), Figure 8 fails to describe an algorithm for performing
the claimed functions, i.e., detects speech, segments speech, recognizing
speech by their corresponding phenomes, and concatenating the phenomes
into text. See Aristocrat Techs. Austl. Pty. Ltd. V. International Game Tech.,
521 F.3d 1328, 1333 (Fed. Cir. 2008). The Federal Circuit has held that “the
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[S]pecification can express the algorithm ‘in any understandable terms
including as a mathematical formula, in prose, or as a flow chart, or in any
other manner that provides sufficient structure.’” Noah Systems, Inc. v.
Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing Finisar Corp. v.
DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Here,
Appellant’s Specification provides neither a mathematical formula, a flow
chart, nor any prose description of the claimed modules noted above.
Hence, the Examiner is correct that Appellant’s reliance on paragraphs 34–
41 and Figures 6–11 of the Specification “is merely conclusory.” Id.
Secondly, we appreciate Appellant’s reliance on prior art to evidence
that each of the disputed means-plus-function limitations noted above is an
art-recognized structure to perform the claimed function; however, “[s]imply
mentioning prior art references in a patent does not suffice as a specification
description to give the patentee outright claim to all of the structures
disclosed in those references.” Pressure Prods. Med. Supplies, Inc. v.
Greatbatch Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010). Neither is
Appellant’s mere statement in the Appeal Brief that the cited references “are
incorporated herein by reference” persuasive that each of the disputed
means-plus-function limitations noted above is an art-recognized structure to
perform the claimed function because Appellant’s Specification does not
“incorporate by reference” the cited references. See Appeal Br. 15; see also
Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir.
1999) (The Specification incorporated by reference a non-patent document
from a technical journal.).
Furthermore, we agree with the Examiner that “Appellant provides no
[adequate] explanation or citations to any of . . . [listed] references to
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support the argument why any of the features identified in the final office
action as indefinite are well-known, routine and conventional.” Ans. 8. In
particular, even considering Appellant’s position that May and Rodriguez
disclose a “text-to-speech module” and a “sign language analysis module,”
respectively, the Examiner is correct that such features “are not disclosed in
the same configuration and for the same step or function claimed in the
present application.” Id. For example, we agree with the Examiner that
May “is silent to any synthesizing step” and Rodriguez “is silent to any
display with facial expressions or servo control.” Id. As such, the Examiner
is correct that Appellant’s mere citation to prior art and reliance on material
“incorporated by reference,” without an adequate explanation to support the
position that the features of each of the means-plus-function limitations
noted above are well-known, routine, and conventional, “is merely
conclusory.” Id.
Accordingly, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 112(b) of claims 1, 3, 5, and 7–15 as being indefinite.

Rejection II—Written Description
The Examiner finds that Appellant’s original disclosure does not
support “a control system including a vision-based active recognition
module,” “a speech processing module having a text-to-speech module and a
speech-to-text module,” and “a robot control and sign language generation
module,” as recited by independent claim 1. Final Act. 4. According to the
Examiner, “neither the claims nor the specification define a corresponding
structure or algorithm for defining what constitutes these modules or how
they operate.” Id.
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In response, Appellant once more argues that the features of means-
plus-function limitations noted above “are well-understood, routine, and
conventional in the art as understood by a person of ordinary skill,” and,
thus, “there is no need to describe them in detail in the [S]pecification.”
Appeal Br. 19 (emphasis added). As evidence that a skilled artisan would
readily understand the scope of the claims, Appellant once again relies on
paragraphs 34–41 and Figures 6–11 of the Specification, and the Mitchell,
May, Bruner, Rodriguez, An, and Maliki disclosures. See Appeal Br. 18–19.
We are not persuaded by Appellant’s arguments for the same reasons
discussed supra, namely, that the corresponding structure (or material or
acts) of the disputed means-plus-function limitations are not disclosed in the
Specification itself in such a manner that a person of ordinary skill in art
would readily understand what structure (or material or acts) will perform
the recited functions. Also, for the same reasons discussed supra, we are not
persuaded by Appellant’s reliance on the Mitchell, May, Bruner, Rodriguez,
An, and Maliki disclosures to evidence that the features of the disputed
means-plus-function limitations are “are well-understood, routine, and
conventional in the art as understood by a person of ordinary skill.”
Hence, for the same reasons discussed above, a skilled artisan cannot
discern what structure will perform the recited functions of the disputed
means-plus-function limitations. Accordingly, Appellant’s original
disclosure does not support “a control system including a vision-based active
recognition module,” “a speech processing module having a text-to-speech
module and a speech-to-text module,” and “a robot control and sign
language generation module,” as recited by independent claim 1. Final Act.
4.
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Therefore, as the Specification fails to provide adequate descriptive
support for the corresponding structure of the above noted means-plus-
function limitations, we sustain the rejection under 35 U.S.C. § 112(a) of
claims 1, 3, 5, and 7–15 as failing to comply with the written description.

Rejection III—Ineligible Subject Matter
The Examiner finds that independent claim 1 recites, inter alia, a
“hearing impaired user” and a “non-hearing impaired user,” “which under
the broadest reasonable interpretation includes a human being,” and, thus,
“are directed to patent ineligible subject matter.” Final Act. 5. According to
the Examiner, “[t]he recited ‘hearing impaired user’ and ‘non-hearing
impaired user’ is . . . interpreted as a required element of . . . claim [1]
because the claim uses these terms in the context of active steps to be
performed using present tense terminology.” Ans. 7.
Appellant argues “that a human is not being claimed,” and, moreover,
“claim [1] merely reflects the functionality of the control system and then
relates it to the Preamble.” Appeal Br. 20.
Independent 1 recites, inter alia, “[a] portable robot for two way
communication between a non-hearing impaired user and a hearing-impaired
user . . . comprising . . . a head having a front surface facing the hearing
impaired user . . . [and] a second display screen . . . facing the non-hearing
impaired user.” Suppl. Appeal Br. 4 (Claims App.).
The recitations of a hearing impaired user and a non-hearing impaired
user in the preamble and in the body of the claim are mere statements of
intended use and do not constitute or explain any structural claim
limitations. “An intended use or purpose usually will not limit the scope of
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the claim because such statements usually do no more than define a context
in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Here, the
hearing impaired user and the non-hearing impaired user define the context
in which the robot is used by reciting reference points. In particular, the
front face of the robot head faces the hearing impaired user in order for the
robot to receive a video signal and translate the gestures and facial
expressions of the hearing impaired user to a translated text, which is then
displayed on the second display screen facing the non-hearing impaired user.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1, 3, 5, and 7–15 under 35 U.S.C. § 101 and Section 33(a) of the
American Invents Act as being directed to, or encompassing, a human
organism.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 3, 5, 7–15 112(b) Indefinite 1, 3, 5, 7–15
1, 3, 5, 7–15 112(a) Written
description
1, 3, 5, 7–15
1, 3, 5, 7–15 101 Ineligible
subject matter
1, 3, 5, 7–15
Overall
Outcome
1, 3, 5, 7–15

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED