Østergaard, Esben, Hallundbæk

Patent Trials and Appeals Board

Nov 3, 2020

13885233 - (D) (P.T.A.B. Nov. 3, 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. 13/885,233 05/14/2013 Esben Hallundbæk Østergaard 2012352-0001 (2703-US) 7091 165522 7590 11/03/2020 Burns & Levinson LLP / Teradyne 125 High Street Boston, MA 02110 EXAMINER MANCHO, RONNIE M ART UNIT PAPER NUMBER 3666 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): docketing@burnslev.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ESBEN HALLUNDBÆK ØSTERGAARD Appeal 2019-003824 Application 13/885,233 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1-8, 17-19, 22-28, and 32-51. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Universal Robots A/S. Appeal Br. 3. Appeal 2019-003824 Application 13/885,233 2 STATEMENT OF THE CASE Claimed Subject Matter The Appellant’s “invention relates generally to the field of programmable robots and more specifically to programming methods for such robots.” Spec. 1:4-5. Claims 1, 17, 26, 37, and 45 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method performed using a computing system to program a robot using a geometric reference in a neighborhood of the robot, the method comprising: causing the robot to be placed at a position in the neighborhood of the robot; obtaining information representing the geometric reference in the neighborhood, the geometric reference comprising a multi-dimensional construct, wherein obtaining the information comprises: causing a part of the robot to move to points in the neighborhood in order to obtain data based on the points, the data being obtained from sensors associated with at least one of motors or joints of the robot, and using the data to determine the information representing the geometric reference; and storing, in a storage device, the information representing the geometric reference and a label identifying the geometric reference; wherein the information representing the geometric reference and the label are usable by the robot to define movement of the part of the robot along the geometric reference, and are usable by the robot to define movement of the part of the robot at points away from the geometric reference, and are usable to implement the movement. Appeal 2019-003824 Application 13/885,233 3 References The prior art relied upon by the Examiner is: Name Reference Date Rongo US 6,292,715 B1 Sept. 18, 2001 Okamoto et al. (“Okamoto”) US 6,408,224 B1 June 18, 2002 Petitionable matter The Appellant seeks review of the Examiner’s objection to the Abstract of the Specification and claims 11 and 21 (Final Act. 3). Appeal Br. 24; Reply Br. 1-2. However, this matter is reviewable by petition under 37 C.F.R. § 1.181 (see Manual of Patent Examining Procedure (MPEP) §§ 1002, 1002.02(c)(4)) and is not within the jurisdiction of the Board (see MPEP § 1201). See Ans. 3; see also In re Mindick, 371 F.2d 892, 894 (CCPA 1967). Rejections2 Claims 1-8 and 37-44 are rejected under 35 U.S.C. § 103(a) as unpatentable over Rongo alone or in the alternative over Rongo in view of Okamoto. Claims 17-19, 22-28, 32-36, and 45-51 are rejected under 35 U.S.C. § 102(b) as anticipated by Rongo. 2 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3; see Final Act. 2-3. Appeal 2019-003824 Application 13/885,233 4 ANALYSIS Rejections under 35 U.S.C. §§102(b) and 103(a) In view of our determination that claims 1-8, 17-19, 22-28, and 32- 51 are indefinite, infra, it follows that the rejections of these claims under 35 U.S.C. §§102(b) and 103(a) must fall because they are necessarily based on a speculative assumption as to the meaning of the claims. See In re Aoyama, 656 F.3d 1293, 1298 (Fed. Cir. 2011) (“[A] claim cannot be both indefinite and anticipated.”) (quoting Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010)); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962). Thus, we do not sustain the Examiner’s rejections of claims 1-8, 17-19, 22-28, and 32-51. It should be understood, however, that our decision in this regard is pro forma and based solely on the indefiniteness of the claimed subject matter set forth below, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. New Ground of Rejection Independent claims 1, 17, 26, 37, and 46 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter, which the Appellant regards as the invention. See In re Packard, 751 F.3d 1307, 1310-13 (Fed. Cir. 2014) (“[A] claim is indefinite when it contains words or phrases whose meaning is unclear,” i.e., “ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention.”); see also Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining that the USPTO considers a claim indefinite when it “contains words or phrases whose meaning is unclear”). Further, the Appeal 2019-003824 Application 13/885,233 5 claims that depend from independent claims 1, 17, 26, 37, and 46 are indefinite due to their dependency on an indefinite claim. We fail to understand the metes and bounds of the claim term “geometric reference,” which “compris[es] a multi-dimensional construct.” See, e.g., Appeal Br. 42 (Claims App.). We note that the meaning of claim term “geometric reference” must fit with the remaining claim recitations, including: wherein the information representing the geometric reference and the label are usable by the robot to define movement of the part of the robot along the geometric reference, and are usable by the robot to define movement of the part of the robot at points away from the geometric reference and are usable to implement the movement [(claim 1)]; and wherein the information representing the geometric reference and the label are usable by the robot to define movements of the part of the robot along multiple different paths and are usable to implement the movements [(claim 37)]. See, e.g., Appeal Br. 42, 47 (Claims App.).3 See, e.g., id. Stated otherwise, we determine that the claimed term “geometric reference,” which includes an understanding of how further recitations of the claims affect its meaning, is unclear. We also note that the terms “geometric reference” and “multi- dimensional construct” were never used explicitly in the Specification. It is relevant that the Specification describes: 3 The Examiner correctly points out “that [the A]ppellant’s claims only require that the information is USABLE by the robot to define movements of the robot along the geometric reference and USABLE by the robot to define movements of the robot at points [away] from the geometric reference.” Ans. 5. Appeal 2019-003824 Application 13/885,233 6 Thus, according to a first aspect of the present invention, a method for programming a robot is provided, the method comprising the steps of . . . (iii) establishing a relationship between said geometrical feature and a robot-related coordinate system, whereby the robot can subsequently be instructed to carry out movements of specified portions of the robot relative to said surroundings by reference to said one or more geometrical features. Spec. 3:15-23 (emphasis added); see id. at 3:28-4:2, 4:20-27; 6:3-10; 12:2- 9 (original claim 1); 13:16-22 (original claim 9). However, the Specification, including the foregoing description, fails to provide an adequate description of the terms “geometric reference” or “multi- dimensional construct,” such that one of ordinary skill in the art would be able to ascertain what the terms encompass, and therefore, understand the metes and bounds of the claims. See also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Additionally, we note that the Appeal Brief and Reply Brief fail to provide adequate guidance as to what the term “geometric reference” as required by the claims encompasses. For example, the Appellant contends that the claimed “geometric reference” is not a point because, by definition, a point is one-dimensional, while the claims require the “geometric reference” to be a “multi-dimensional construct.” Reply Br. 3; see id. at 9, 11, 13. However, this contention only seeks to establish what the claimed “geometric reference” is not; the contention does not establish what the claimed “geometric reference” is. For the foregoing reasons, we determine that claims 1-8, 17-19, 22- 28, and 32-51 are indefinite. Appeal 2019-003824 Application 13/885,233 7 CONCLUSION We REVERSE pro forma the Examiner’s rejections of: claims 1-8 and 37-44 under 35 U.S.C. § 103(a) as unpatentable over Rongo alone or in the alternative over Rongo in view of Okamoto; and claims 17-19, 22-28, 32-36, and 45-51 under 35 U.S.C. § 102(b) as anticipated by Rongo. We enter a NEW GROUND OF REJECTION of 1-8, 17-19, 22-28, and 32-51 under 35 U.S.C. § 112, second paragraph, as indefinite pursuant to our authority under 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. 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). Appeal 2019-003824 Application 13/885,233 8 In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1-8, 37-44 103(a) Rongo 1-8, 37-44 1-8, 37-44 103(a) Rongo, Okamoto 1-8, 37-44 17-19, 22-28, 32-36, 45-51 102(b) Rongo 17-19, 22-28, 32-36, 45-51 1-8, 17-19, 22-28, 32-51 112 ¶ 2 Indefinite 1-8, 17-19, 22-28, 32-51 Overall Outcome 1-8, 17-19, 22-28, 32-51 1-8, 17-19, 22-28, 32-51 REVERSED; 37 C.F.R. § 41.50(b)