Xiangyun Ye et al.

Patent Trials and Appeals Board

Sep 21, 2021

2020004931 (P.T.A.B. Sep. 21, 2021)

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.
12/647,192 12/24/2009 Xiangyun Ye C09-009(119/0096) 1493
101062 7590 09/21/2021
Cognex Corporation
One Vision Drive
Natick, MA 01760
EXAMINER
ITSKOVICH, MIKHAIL
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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@loginovlaw.com
mstevenosky@loginovlaw.com
patents.us@cognex.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte XIANGYUN YE, DAVID Y. LI, GURUPRASAD SHIVARAM,
and DAVID J. MICHAEL
________________

Appeal 2020-004931
Application 12/647,192
Technology Center 2400
________________

Before MARC S. HOFF, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1, 8–15, 19, 23, 24, 26, and 27.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to calibration of vision system cameras. Spec.
¶ 1. Claim 1 is illustrative of the invention and is reproduced below with
emphasis denoting the dispute pertaining to the § 103(a) rejection:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Cognex Corporation is the real
party in interest. Appeal Br. 4.
2 Claims 2–7, 16–18, 20–22, and 25 are cancelled. Appeal Br. 24–26.
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1. A method for determining camera miscalibration in
a system of at least three cameras, comprising the steps of:
a) during a calibration process and prior to a runtime
vision inspection process, calibrating the at least three cameras,
including estimating respective intrinsic calibration parameters
and extrinsic calibration parameters for each of the at least three
cameras and finding respective error statistics for each of the at
least three cameras, each of the at least three cameras is located
at a different orientation with respect to a calibration object in a
three-dimensional space;
b) during the runtime vision inspection process in which
an inspection object is aligned or inspected based upon a
training model, the intrinsic calibration parameters, the extrinsic
calibration parameters, and the error statistics, finding a first
feature on the inspection object in the three-dimensional space
with a first plurality of the at least three cameras and determining
a first estimated location of the first feature;
c) during the runtime vision inspection process, comparing
the first estimated location with a first predicted location from
the training model to generate a first alignment score to be used
in alignment or inspection of the inspection object;
d) during the runtime vision inspection process, finding a
second feature on the inspection object in the three-dimensional
space with a second plurality of the at least three cameras and
determining a second estimated location of the second feature;
e) during the runtime vision inspection process, comparing
the second estimated location with a second predicted location
from the training model to generate a second alignment score to
be used in alignment or inspection of the inspection object;
f) during the runtime vision inspection process, comparing
the first alignment score and the second alignment score with
respect to at least one of (i) an accuracy determined during step
(a), or (ii) a desired system accuracy; and
g) in response to step (f) and during the runtime vision
inspection process, determining whether an additional
calibration process is required based upon a result of the step of
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comparing exceeding at least one of the (i) accuracy determined
during step (a) and (ii) the desired system accuracy.
Appeal Br. 23–24 (Claims Appendix) (emphasis added).

REJECTIONS
The Examiner rejects claims 1, 8–15, 19, 23, 24, 26, and 27 under
35 U.S.C. § 101 as being directed to patent ineligible subject matter. Final
Act. 2–4; Non-Final Act. 3–6.3
The Examiner rejects claims 1, 8–15, 19, 23, 24, 26, and 27 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Utsumi
(US 7,212,228 B2; issued May 1, 2007), Chen (US 2007/0196016 A1;
published Aug. 23, 2007), and Appellant’s admitted prior art (hereinafter
“AAPA”). Ans. 3–10; Final Act. 5–17.
ANALYSIS
I. Claims 1, 8–15, 19, 23, 24, 26, and 27 Rejected Under 35 U.S.C.
§ 101
A. Principles of Law
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo

3 In this Decision, all references to the Non-Final Rejection are to the Non-
Final Rejection that was mailed on June 14, 2018.
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Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
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also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“Update”); see also
October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55942 (Oct.
18, 2019) (notifying the public of the availability of the Update). “All
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USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also
October 2019 Guidance Update at 1. The Manual of Patent Examining
Procedure (“MPEP”) now incorporates this revised guidance and subsequent
updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).4
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.5
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; or

4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
5 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
MPEP § 2106.05(d).
C. The Examiner’s Rejection, Appellant’s Arguments, and Our Analysis
The Examiner concludes that the present claims recite a mental
process. Final Act. 3; see Non-Final Act. 4–5 (concluding the present claims
are analogous to the claims in Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016), which held that claims drawn to “collecting
information, analyzing it, and displaying certain results of the collection and
analysis” (i.e., a mental process) were ineligible under §101). The Examiner
concludes that the present claims are not integrated into a practical
application. Final Act. 2–4. The Examiner determines the present claims do
not amount to significantly more than an abstract idea itself because the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional. Non-Final Act. 5 (citing Spec. ¶¶ 2–
5).
Although Appellant is on notice of the § 101 rejection (see pages 7–10
in Appellant’s Response filed on December 14, 2018), Appellant does not
proffer arguments that addresses this rejection. Appeal Br. 11–22 (lacking
any argument pertaining to § 101); Reply Br. 2–6 (lacking any argument
pertaining to § 101).
We, therefore, summarily sustain the Examiner’s rejection of:
(1) independent claims 1 and 19; and (2) dependent claims 8–15, 23, 24, 26,
and 27 under 35 U.S.C. § 101.
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
II. Claims 1, 8–15, 19, 23, 24, 26, and 27 Rejected Under 35 U.S.C.
§ 103(a)
The Examiner concludes the italicized limitation recited above is
recited in the preamble and, therefore, is not entitled to patentable weight.
Ans. 5–6; Final Act. 9. Moreover, the Examiner finds Utsumi and AAPA
teach correspondence to the changes in the position and posture of the
camera by failure during operation in addition to prior calibration of the
camera, which the Examiner maps to the italicized limitation recited above.
Ans. 6, 11–12 (citing Utsumi, 2:31–33; AAPA ¶¶ 5–6); Final Act. 9–10
(citing Utsumi, 2:31–33; AAPA ¶¶ 5–6).
Appellant argues that the italicized limitation is not recited in the
preamble. Appeal Br. 12–16; Reply Br. 2–3. In addition, Appellant argues
Utsumi’s disclosure is part of the background of Utsumi and merely teaches
correspondence to the changes in the position and posture of the camera by
failure during operation in addition to prior calibration of the camera rather
than the italicized limitations above. Appeal Br. 15–16. Moreover,
Appellant argues paragraphs 6 and 7 of AAPA teach the system is taken out
of runtime operation, which fails to teach the italicized limitations above.
Appeal Br. 12–14 (citing AAPA ¶¶ 6, 8) Reply Br. 2–3 (citing AAPA ¶¶ 6–
7). We agree with Appellant.
As an initial matter, we conclude that the italicized limitation is not
recited in the preamble. Furthermore, although Utsumi uses the phrase
“during operation,” the Examiner does not explain sufficiently how the cited
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portion of Utsumi teaches “based upon a training model, the intrinsic
calibration parameters, the extrinsic calibration parameters, and the error
statistics.” Ans. 6, 11–12 (citing Utsumi, 2:31–33; AAPA ¶¶ 5–6); Final
Act. 9–10 (citing Utsumi, 2:31–33; AAPA ¶¶ 5–6). Lastly, AAPA teaches
that the system is taken out of runtime operation, which fails to teach the
italicized limitations above. Appeal Br. 12–14 (citing AAPA ¶¶ 6, 8) Reply
Br. 2–3 (citing AAPA ¶¶ 6–7).
We, therefore, do not sustain the Examiner’s rejection of:
(1) independent claims 1 and 19; and (2) dependent claims 8–15, 23, 24, 26,
and 27 under 35 U.S.C. § 103(a).

CONCLUSION

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 8–15, 19,
23, 24, 26,
27
101 Eligibility 1, 8–15, 19,
23, 24, 26,
27

1, 8–15, 19,
23, 24, 26,
27
103(a) Utsumi, Chen,
AAPA
1, 8–15, 19,
23, 24, 26,
27
Overall
Outcome
1, 8–15, 19,
23, 24, 26,
27