Yulun Wang et al.

Patent Trials and Appeals Board

Mar 5, 2020

12907420 - (D) (P.T.A.B. Mar. 5, 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.
12/907,420 10/19/2010 YULUN WANG P040 1978
98471 7590 03/05/2020
InTouch Health
C/O CPA Global
900 2nd Avenue South, Suite 600
Minneapolis, MN 55402
EXAMINER
CARTER, RICHARD BRUCE
ART UNIT PAPER NUMBER
2485
NOTIFICATION DATE DELIVERY MODE
03/05/2020 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):
clambrecht@intouchhealth.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YULUN WANG, TIMOTHY C. WRIGHT,
DANIEL S. SANCHEZ, and MARCO C. PINTER
____________

Appeal 2018-007118
Application 12/907,420
Technology Center 2400
____________

Before ST. JOHN COURTENAY III, CARL L. SILVERMAN, and
JUSTIN BUSCH, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge
ST. JOHN COURTENAY III.

Opinion Dissenting filed by Administrative Patent Judge JUSTIN BUSCH.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 3–9, 11–18, 20, and 21, which are all the claims
pending in this application. Claims 2, 10, 19, and 22–24 are canceled. We
have jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We reverse.

1 We use the word “Appellant” to refer to Applicant as defined in 37 C.F.R.
§ 1.42(a). The real party in interest is InTouch Technologies, Inc. Appeal
Br. 2.
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STATEMENT OF THE CASE2
Introduction
Appellant’s claimed invention relates generally to the field of
robotics. More specifically, Appellant’s invention relates to “a robot face
that includes a camera, a monitor, a microphone and a speaker, wherein the
robot face is connected to a stand that is adapted to support the robot face on
a chair.” Spec. ¶ 2.
Exemplary Independent Claim 1
1. A robot face system that can be placed on a chair,
comprising:

a robot face that includes a camera, a monitor, a
microphone and a speaker; and

a stand that is connected to said robot face, wherein said
stand is disposed between said robot face and said chair,
said stand has a lower portion adapted to be placed on a surface
of the chair and support said robot face on the chair, said lower
portion does not include wheels, said robot face is connected to
said stand by a pan joint that can move said camera and monitor
relative to the stand about a pan axis, and said stand has a
length so that the height of the robot face is at least twelve
inches above the surface of the chair.

Appeal Br. 13, “CLAIMS APPENDIX.” (Emphasis added regarding the
contested dispositive limitations under 35 U.S.C. § 103).

2 We herein refer to the Non-Final Office Action, mailed October 6, 2016
(“Non-Final Act.”); Supplemental Appeal Brief, filed February 28, 2018
(“Appeal Br.”); the Examiner’s Answer, mailed May 2, 2018 (“Ans.”), and
the Reply Brief, filed July 2, 2018 (“Reply Br.”).
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Rejection
Claims 1, 3–9, 11–18, 20, and 21 are rejected under pre-AIA
35 U.S.C. § 103(a) as being obvious over the combined teachings and
suggestions of Smith et al. (US 2005/0219356 A1; pub. Oct. 6, 2005)
(“Smith”) in view of Ziegler et al. (US 2009/0177323 A1; pub. July 9, 2009)
(“Ziegler”).
ANALYSIS
We have considered all of Appellant’s arguments and any evidence
presented. Based upon our review, and for the reasons discussed below,
Appellant provides sufficient argument and evidence to persuade us the
Examiner erred with respect to the single rejection under 35 U.S.C. § 103(a),
over the cited combination of Smith and Ziegler.
Rejection of Independent Claim 1 under 35 U.S.C. § 103(a)
Contentions
Appellant contends:
The Examiner contends that Ziegler supplies “the well-known
concept wherein said stand is disposed between said robot face
and said chair.” Ziegler discloses a mobile robot guest or
“companion robot” for interacting with a human resident. The
mobile robot 10 has a head 16 coupled to a mobility platform 12
via a riser or torso 13. The mobility platform 12 includes
wheels 14. Like Smith, the robot of Ziegler is placed on and
moves about a floor.
Appeal Br. 11 (emphasis added).
Appellant urges that “[n]either Smith nor Ziegler describe[] the step of
placing a stand connected to a robot face in a chair, or an arrangement in
which a stand is disposed between a robot face and a chair, as claimed.”
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Appeal Br. 11. In support, Appellant points to Ziegler, Figure 1A, and
paragraphs 107–109. Id.

Issue: Under 35 U.S.C. § 103(a), did the Examiner err by finding
Smith and Ziegler collectively teach or suggest the disputed dispositive
limitation:
wherein said stand is disposed between said robot face
and said chair[,]
within the meaning of independent claim 1?3 (Emphasis added).
The Examiner disagrees with Appellant, and further explains the basis
for the rejection:
The [E]xaminer points out that Smith discloses the well-known
concept of “a robot face system that can be placed on a chair”
(see Smith, figs. 1-2 and fig. 4B), comprising: the features “said
stand has a lower portion adapted to be placed on a surface of
the chair and support said robot on the chair, said lower portion
does not include wheels” (see Smith, fig. 4B, where the
[E]xaminer notes that although figs. 1-2 appear[] to be a robot
face positioned on a chair, one of ordinary skill in the art could
recognize that the robot face 100 could be lifted and placed on
to any chair-like horizontal steady surface (e.g. in Fig.2 the
system is sitting on a chair like top. The system shown on table
top/desktop of fig. 4B can also be moved to the chair).
Ans. 14 (emphasis added).
Although the Examiner initially relies upon Smith to teach “the well-
known concept of a robot face system that can be placed on a chair” (id.),
the Examiner does not take Official Notice that the claimed arrangement of a

3 We give the contested claim limitations the broadest reasonable
interpretation (“BRI”) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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robot face with a stand disposed on a chair was well-known in the art at the
time of the invention.4 In reviewing the record, we find no teaching or
depiction of a chair in Smith or Ziegler.
Although we find a chair is something notoriously well known,
without more evidence of record, we cannot find that the arrangement of the
“stand [] disposed between said robot face and said chair” would have been
well known at the time of the invention. Claim 1.
The MPEP guides:
It is never appropriate to rely solely on “common knowledge”
in the art without evidentiary support in the record, as the
principal evidence upon which a rejection was based. Zurko,
258 F.3d at 1385 (“[T]he Board cannot simply reach
conclusions based on its own understanding or experience—or
on its assessment of what would be basic knowledge or
common sense. Rather, the Board must point to some concrete
evidence in the record in support of these findings.”). While the
court explained that, “as an administrative tribunal the Board
clearly has expertise in the subject matter over which it
exercises jurisdiction,” it made clear that such “expertise may
provide sufficient support for conclusions [only] as to
peripheral issues.” Id. at 1385-86. As the court held in Zurko,
an assessment of basic knowledge and common sense that is
not based on any evidence in the record lacks substantial
evidence support. Id. at 1385. See also Arendi v. Apple, 832
F.3d 1355 (Fed. Cir. 2016) (finding that the Board had not
provided a reasoned analysis, supported by the evidence of
record, for why “common sense” taught the missing process
step).

4 See MPEP § 2144.03(A): “Official notice unsupported by documentary
evidence should only be taken by the examiner where the facts asserted to be
well-known, or to be common knowledge in the art are capable of instant
and unquestionable demonstration as being well-known.”
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Subsequently in the Non-Final Action (6), the Examiner finds Smith
“is not very clear wherein said stand is disposed between said robot face and
said chair as specified in the amended claim.” To remedy this deficiency,
the Examiner looks to Figure 1A and paragraph 109 of Ziegler to teach or
suggest the contested limitation: “wherein said stand is disposed between
said robot face and said chair.” Non-Final Act. 11. (Emphasis added).
Specifically, the Examiner relies upon Ziegler’s Figure 1A, element 12, and
its associated descriptions in paragraph 109, to teach the claimed “chair.”
We reproduce Figure 1A of Ziegler below, depicting body/mobility
platform 12 and riser/torso 13:

Figure 1A of Ziegler is shown above, depicting rolling stand 10
including riser/torso 13 disposed between head 16 (including display 26)
and body/mobility platform 12 with rollers (wheels) 14.
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Turning to the Specification for context regarding the broadest
reasonable interpretation of the claim term “chair,” we find Appellant’s
description of a “chair” is consistent with the plain meaning of the term, to
mean a “seat,” typically with a back and four legs, on which a person may
sit. See Fig. 2 and Spec. ¶ 8 (“[t]he stand is configured so that the robot face
is at a height that approximates the location of a person’s head if they were
to be sitting in the chair.”) (Emphasis added).
In reviewing Ziegler, Figure 1A and paragraphs 107–109 (as pointed
to by Appellant, Appeal Br. 11), we find the following description in
paragraph 109:
The mobility platform 12 supports the torso 13, and
may be generally triangularly shaped, or may be shaped as a
curve of constant width.
Simply put, we find Ziegler’s mobility platform 12 does not
reasonably teach or suggest a chair, as claimed. We also find Smith’s rolling
stand 10 (Fig. 1) does not teach or suggest a chair. For essentially the same
reasons argued by Appellant in the Briefs (Appeal Br. 10–11; Reply Br.
1–2), we find the Examiner has erred in finding the mobility platform of
Ziegler to be a “chair” under the broadest reasonable interpretation of the
claim term, much less a chair arranged as claimed. See claim 1.
Therefore, we are constrained on this record to reverse the Examiner’s
obviousness rejection of independent claim 1 over the cited combination of
Smith and Ziegler. Because remaining independent claims 9 and 18 recite
the disputed limitations using similar language of commensurate scope, we
also reverse the Examiner’s rejection of independent claims 9 and 18.
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Because we have reversed the rejection of each independent claim on
appeal, we also reverse the Examiner’s obviousness rejection for each
dependent claim on appeal.
Accordingly, we reverse the Examiner’s obviousness rejection of all
claims 1, 3–9, 11–18, 20, and 21 on appeal.

CONCLUSION5
The Examiner erred in rejecting claims 1, 3–9, 11–18, 20, and 21, as
being obvious under pre-AIA 35 U.S.C. § 103(a), over the cited combination
of Smith and Ziegler.

5 In the event of further prosecution, including any review prior to
allowance, we leave it to the Examiner to reconsider the withdrawal of the
rejection under 35 U.S.C. § 112, first paragraph (written description). See
Non-final Act. 4. In particular, we note the negative limitation added by
amendment during prosecution: “said lower portion does not include wheels
. . . .” Claim 1. We note the mere absence of a description (or depiction) of
wheels in the Specification and drawings is not basis for an exclusion. See
MPEP § 2173.05(i).
Nor do we find support for the added negative limitation in the
portions of the Specification and drawings cited in the “Summary of the
Claimed Subject Matter” section of the Appeal Brief, page 6 (citing Spec.
¶ 11, Figs. 1–3). We find paragraph 11 of the Specification and Figures 1–3
fail to provide a reason to exclude the wheels. Our reviewing court provides
applicable guidance: “Negative claim limitations are adequately supported
when the specification describes a reason to exclude the relevant limitation.
Such written description support need not rise to the level of disclaimer. In
fact, it is possible for the patentee to support both the inclusion and
exclusion of the same material.” Santarus, Inc. v. Par Pharmaceutical, Inc.,
694 F.3d 1344, 1351 (Fed. Cir. 2012) (emphasis added). See also MPEP
§ 2173.05(i) (“Any negative limitation or exclusionary proviso must have
basis in the original disclosure . . . . The mere absence of a positive
recitation is not basis for an exclusion.”).
Although the Board is authorized to reject claims under 37 C.F.R.
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DECISION SUMMARY
Claims
Rejected
Pre-AIA
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–9,
11–18, 20,
21
103(a) Smith, Ziegler 1, 3–9,
11–18, 20,
21

REVERSED

§ 41.50(b), no inference should be drawn when the Board elects not to do so.
See Manual of Patent Examining Procedure (MPEP) § 1213.02.

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BUSCH, Administrative Patent Judge, dissenting.

I write separately because I respectfully disagree with the Majority
Opinion reversing the Examiner’s rejection of claims 1, 3–9, 11–18, 20, and
21 under 35 U.S.C. § 103 as obvious in view of the combined teachings of
Smith and Ziegler. Instead, I agree with the Examiner’s findings and
conclusions and, therefore, I would affirm the rejection of claims 1, 3–9, 11–
18, 20, and 21 under 35 U.S.C. § 103.
Appellant argues the combination of Smith and Ziegler fails to
disclose “a stand that is connected to said robot face, wherein said stand is
disposed between said robot face and said chair” (the “disputed limitation”),
as recited in independent claim 1 and commensurately recited in
independent claims 9 and 18. Appeal Br. 10; Reply Br. 1–2. Appellant
asserts Smith fails to disclose placing a stand in a chair or “a system in
which a stand is disposed between a robot face and a chair, as claimed.”
Appeal Br. 10–11. Appellant highlights the Examiner’s statement that
“Smith is not very clear” about disclosing “wherein said stand is disposed
between said robot face and said chair.” Appeal Br. 11; see Final Act. 6.
The Examiner finds “Smith discloses the well-known concept of ‘a
robot face system that can be placed on a chair’” and the recited feature of a
system having a stand with “a lower portion adapted to be placed on a
surface of the chair and support said robot on the chair.” Ans. 14 (citing
Smith, Figs. 1, 2, 4b); Final Act. 5 (citing Smith, Figs. 1 (item 20), 2a (item
20), 2c (item 20), 4c (item 70), 14 (item 22a)). Appellant does not contest
these particular findings, asserting only that Smith and Zeigler fail to teach
or suggest the “stand is disposed between said robot face and said chair.”
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Notably, although certain elements of the recited “robot face system”
recite relationships with respect to a chair on which the system’s stand is
adapted to be placed (and the method claims include a step of placing the
robot face on the chair), the chair is not part of the recited system.
Furthermore, the Examiner finds “one of ordinary skill in the art could
recognize that the robot face 100 could be lifted and placed on to any chair-
like horizontal steady surface.” Ans. 14.
Given the Examiner’s uncontested findings and Smith’s disclosed
system including a robot face resting on swivel base 20, I would find Smith
teaches or suggests the disputed limitation. More specifically, given (1) the
Examiner’s uncontested finding that Smith’s system includes a stand having
a lower portion adapted to be placed on a surface of a chair, (2) the
Examiner’s uncontested finding that a person of ordinary skill in the art
would have recognize the ability to place Smith’s system on any chair-like
surface, (3) Smith’s disclosure that it would be desirable to place the robot at
a conference table at a height approximately equal to a sitting position,
Smith ¶ 37, and (4) Smith’s disclosure of robot face 100 disposed above
swivel base 20, see, e.g., Fig. 3, I would find placing Smith’s swivel base 20
on a chair, which would result in swivel base 20 being disposed between the
chair and robot face 100, would have been obvious to a person of ordinary
skill in the art. For this reason alone, I would affirm the Examiner’s
rejection.
In the rejection, the Examiner reiterates the finding that Smith teaches
the recited stand with a lower portion adapted to be placed on a chair and
support the robot face on the char and additionally finds “Smith discloses a
robot face system wherein said robot face is placed on the chair.” Final
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Act. 6 (citing Smith, Figs. 1, 4c, 14a–c). The Examiner then states “Smith
. . . is not very clear [regarding the phrase] wherein said stand is disposed
between said robot face and said chair as specified in the amended claim,”
but finds Ziegler teaches this limitation. Final Act. 6.
Notwithstanding the finding that Smith lacks clarity as to teaching the
disputed limitation, the Examiner finds “the present invention provides
various embodiment designs such that a stand has a lower portion 22a that is
mounted to a platform (i.e. ‘chair’) to support the robot face.” Final Act. 5.
Moreover, in the Answer, the Examiner further finds a person of ordinary
skill in the art would have recognized that Smith’s “robot face 100 could be
lifted and placed on any chair-like horizontal steady surface (e.g. in Fig.2 the
system is sitting on a chair like top [and the] system shown on the table
top/desktop of fig. 4B can also be moved to the chair).” Ans. 14. The
Examiner finds Smith’s teleconferencing system could have been “placed on
any chair-like horizontal steady surface.” Ans. 15; see Smith ¶ 67
(explaining that numerous other variations are possible, such as mounting
the teleconference system on a platform mounted to a ceiling). Moreover,
the Examiner finds “the present invention provides various embodiment
designs such that a stand has a lower portion 22a that is mounted to a
platform (i.e. ‘chair’) to support the robot face.” Final Act. 5.
Although the Examiner finds Smith “is not very clear” about
disclosing a stand disposed between a chair and the robot face, the Examiner
rejects the claims as obvious, not anticipated. Accordingly, although the
Examiner cites Ziegler as more clearly teaching the disputed limitation, I
find the Examiner’s reliance on Ziegler unnecessary and duplicative. Even
to the extent the claims require a specific teaching of a stand in a chair—as
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opposed to simply teaching the uncontested limitations of a “system that can
be placed on a chair” and a stand with “a lower portion adapted to be placed
on a surface of the char and support said robot face on the chair”—I would
find Smith teaches or suggests this subject matter.
In particular, the Examiner’s findings regarding Smith’s disclosed
embodiments having a lower portion mounted to a platform sufficiently
demonstrate that Smith teaches, or at least suggests, the disputed limitation,
without needing to rely on Ziegler’s disclosed subject matter. More
specifically, Smith discloses rolling stand 10 to which swivel base 20’s
lower stage 22 attaches. Smith ¶ 28, Figs. 1, 3. Reviewing Smith’s figures
and disclosure, I find Smith’s rolling stand 10, in combination with lower
stage 22, at least suggests a chair. In combination, rolling stand 10 and
lower stage 22 appear to form a flat platform attached to a base with legs
similar to the base and legs of a chair. Compare Smith Figs. 1–2 (depicting
Smith’s robot face system mounted on a base attached to a rolling stand)
with Smith Figs. 4a–4c (depicting a chair behind a desk with a very similar
base and legs). Given that lower stage 22 is depicted as a flat surface on
which the rest of Smith’s disclosed system may be mounted, I see no reason
why Smith’s embodiment depicted in Figures 1 through 3 fails to teach a
chair as contemplated by Appellant’s claims.
For the reasons discussed above, I am not persuaded the Examiner
erred, and I would sustain the Examiner’s rejection of claims 1, 3–8, 11–18,
20, and 21 under 35 U.S.C. § 103.