Avaya Inc.

Patent Trials and Appeals BoardJan 8, 2021

2019004505 (P.T.A.B. Jan. 8, 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. 15/086,388 03/31/2016 George Erhart 4366-798 8664 48500 7590 01/08/2021 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER SHOLEMAN, ABU S ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 01/08/2021 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): cjacquet@sheridanross.com edocket@sheridanross.com pair_Avaya@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE ERHART, DAVID SKIBA, and VALENTINE C. MATULA Appeal 2019-004505 Application 15/086,388 Technology Center 2400 Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and JAMES B. ARPIN, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge CURCURI. Opinion Dissenting-in-part filed by Administrative Patent Judge THOMAS. CURCURI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–14, and 16–20. The Examiner finds claims 4 and 15 contain allowable subject matter, but are objected to as 1 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Avaya, Inc. Appeal Br. 2. Appeal 2019-004505 Application 15/086,388 2 dependent from rejected base claims. Final Act. 38. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. CLAIMED SUBJECT MATTER The claims are directed to “command and control of microprocessor- driven mechanical devices.” Spec. ¶ 1. Claim 1, reproduced below with the key disputed limitation emphasized, is illustrative of the claimed subject matter: 1. A robot, comprising: a communication interface; a microprocessor in communication with the communication interface and when provided with instructions cause the microprocessor to: perform an authentication of the robot at a service location, the authentication comprising authentication of at least one component of the robot; operate the robot to perform a task at the service location, the task comprising a physical aspect; upon the authentication being successful, operating the robot to perform the task in an authenticated mode; and upon the authentication not being successful, operating the robot to perform the task in a non- authenticated mode, whereby the robot is operationally restrained. REFERENCES The Examiner relies on the following references: Appeal 2019-004505 Application 15/086,388 3 Name Reference Date Roh US 2007/0112463 A1 May 17, 2007 Fung US 2013/0117867 A1 May 9, 2013 Emmertz US 2013/0158708 A1 June 20, 2013 REJECTION Claims 1–3, 5–14, and 16–20 are rejected under 35 U.S.C. § 103 as obvious over the combined teachings of Roh, Fung, and Emmertz. Final Act. 4–38. OPINION Obviousness over Roh, Fung, and Emmertz The Examiner finds Roh, Fung, and Emmertz teach all limitations of claim 1. Final Act. 4–8. In particular, the Examiner finds Roh teaches “upon the authentication not being successful, operating the robot . . . in a non- authenticated mode, whereby the robot is operationally restrained” as recited in claim 1. See Final Act. 5 (citing Roh ¶ 38); see also Ans. 4–5 (citing Roh Fig. 1, ¶¶ 27, 30, 37, 38) (“[W]hen the robot [in Roh] is not authenticated, the robot provides the service (task) to the user not based on its communication with the robot server such that the robot is operationally restrained. When in the non-authenticated mode, the service (task) provides [sic] by the robot to the user is decreased to include connecting to the wireless AP, and/or creating and transmitting a connection request packet to the authentication server.”). Appellant presents the following principal arguments: “The [claimed] robot performs the task whether authenticated or not the robot is authenticated. [sic] However, the task is performed by the robot being operated in either one of an authenticated mode or a non-authenticated Appeal 2019-004505 Application 15/086,388 4 mode. Such a teaching is absent from the art of record.” Appeal Br. 4. “The robot performs the task in one of two modes depending on whether or not authentication is successful. Rather than rendering the robot inoperable when authentication is not successful, as taught by Roh, the robot still performs the task, but is operationally restrained.” Appeal Br. 5. Assuming arguendo, Roh teaches what is proffered it remains that performing one task upon authentication being successful and not performing the one task, if authentication fails, is different from what is claimed. To paraphrase, what is claimed is that the task is performed when authentic and performed when not authentic, the mode of operation is what changes. Reply Br. 6. We determine the Examiner errs in finding the cited prior art teaches the key disputed limitation. Roh discloses that upon the robot 10 being authenticated by the robot server 13, “the robot 10 communicates with the robot server 13 using the address and the port number of the corresponding robot server 13.” Roh ¶ 37. Thus, after authentication, robot server 13 manages and controls robot 10. See Roh ¶ 37; see also Roh ¶ 49 (“The robot proxy 632 [of the robot server 13] communicates with the [authenticated] robot 10 through the data transmitting portion 631 . . . The synchronous communication is used for a seamless operation of the robot in a move, speech or image display.”). Roh discloses: When the robot 10 is not authenticated by the robot server 13 in operation 36, the robot server 13 to be connected to is not considered to operate. Accordingly, the controller 122 proceeds to operation 34 to obtain an address and port number of another robot server from the robot server list table, and then proceeds to operation 35. Roh ¶ 38. Appeal 2019-004505 Application 15/086,388 5 Thus, when the robot is not authenticated, controller 122 of the authentication server 12 attempts to connect to another robot server. Roh ¶ 38. Thus, when the robot is not authenticated, robot server 13 does not manage and control robot 10, i.e., does not communicate with the robot to operate the robot in a move, speech or image display (perform the task). See Roh ¶ 38; see also Roh ¶ 49. In Roh, the robot only performs the task upon being authenticated by a server. See Roh Fig. 3. For these reasons, on this record, we find Roh does not teach the key disputed limitation, which requires “upon the authentication not being successful, operating the robot to perform the task in a non-authenticated mode, whereby the robot is operationally restrained.” We emphasize that the claim language requires the same task to be performed in both the authenticated mode and the non-authenticated mode. Thus, even to the extent that Roh’s robot 10 does anything at all when robot 10 is not authenticated (see Ans. 4–5), this still would not teach the disputed limitation because robot server 13 does not manage and control robot 10 in the non-authenticated mode to perform the task. We, therefore, do not sustain the Examiner’s rejection of claim 1. We also do not sustain the Examiner’s rejection of claims 2, 3, and 5–12, which depend from claim 1. Independent claim 13 includes recitations similar to the disputed limitation of claim 1. Claim 13 requires the capability of operating in both an authenticated and a non-authenticated mode. Specifically, claim 13 requires: (1) “determin[ing] whether the robot . . . is authentic,” (2) “provid[ing] indicia of the determination to the robot,” and (3) “thereby caus[ing] the robot [to] operate[] to perform a task . . . in one of an Appeal 2019-004505 Application 15/086,388 6 authenticated mode or a non-authenticated mode in accord with the indicia provided thereto.” See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *7 (PTAB Apr. 28, 2016) (precedential) (“Although claim 11 recites functions that are substantially similar to the steps recited in the method of claim 1, . . . claim 11 is directed to a system. The broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur. This interpretation of the system claim differs from the method claim because the structure (i.e., a processor programmed to perform an algorithm for carrying out the recited function should the recited condition be met) is present in the system regardless of whether the condition is met and the function is actually performed.”). This interpretation is consistent with the Specification’s disclosure. See Spec. ¶ 74 (“perform an authentication of the robot at a service location; upon the authentication being successful, operating the robot in an authenticated mode; and upon the authentication not being successful, operating the robot in a non-authenticated mode.”). We, therefore, do not sustain the Examiner’s rejection of claim 13 for the same reasons discussed above. We also do not sustain the Examiner’s rejection of claims 14, 16, and 17, which depend from claim 13. Independent claim 18 includes recitations similar to the disputed limitation of claim 1. We, therefore, do not sustain the Examiner’s rejection of claim 18 for the same reasons discussed above. We also do not sustain the Examiner’s rejection of claims 19 and 20, which depend from claim 18. Appeal 2019-004505 Application 15/086,388 7 CONCLUSION The Examiner’s decision to reject claims 1–3, 5–14, and 16–20 is reversed. The Examiner’s objections to claims 4 and 15 are moot. See Final Act. 38. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 5–14, 16–20 103 Roh, Fung, Emmertz 1–3, 5–14, 16–20 REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORGE ERHART, DAVID SKIBA, and VALENTINE C. MATULA Appeal 2019-004505 Application 15/086,388 Technology Center 2400 Before CAROLYN D. THOMAS, JEREMY J. CURCURI, and JAMES B. ARPIN, Administrative Patent Judges. Opinion Dissenting-in-part filed by Administrative Patent Judge THOMAS. I respectfully dissent from the Majority’s decision reversing the Examiner’s rejection of claims 13, 14, 16, and 17 under 35 U.S.C. § 103 over the combined teachings of Roh, Fung, and Emmertz. Although I agree with the Majority that the Examiner has not shown that Roh teaches or suggests “upon the authentication not being successful, operating the robot to perform the (same) task in a non-authenticated mode,” as recited in claim 1, I disagree that this feature is required in independent claim 13. In other words, the Majority’s reversal hinges on all the claims requiring that the robot performs the (same) task when authentication is not successful, i.e., performs the (same) task in both the authenticated mode and the non-authenticated mode. Appeal 2019-004505 Application 15/086,388 2 However, independent claim 13 recites “the server . . . thereby causes the robot operates [sic] to perform a task at the service location, comprising a physical component, in one of an authenticated mode or a non- authenticated mode in accord with the indicia provided thereto.” See claim 13. The claims measure the invention. See SRI Int’l v. Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). During prosecution before the USPTO, claims are to be given their broadest reasonable interpretation, and the scope of a claim cannot be narrowed by reading disclosed limitations into the claim. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Here, I believe the Majority is improperly narrowing claim 13 by reading disclosed limitations into the claims. I agree with the Examiner that claim 13, as written, merely requires the capability of performing a task in “one of” an authenticated mode OR a non-authenticated mode, not necessarily requiring performing the (same) task in both modes. See Ans. 7. Claim 13 explicitly recites the terms “one of” and “or,” which denotes a task in “either” mode, not the necessarily the same task in both modes. Given that claim 13 is a system claim, I also point out that the courts have interpreted functional language in system/apparatus claim as requiring that the system/apparatus possess the capability of performing the recited function. See Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). As such, for claim 13, I believe the Examiner merely needs to show that Roh’s robot is capable of performing a task in either an authenticated mode or a non-authenticated mode. Here, the Majority agrees the Examiner has shown performing a task in at least an authenticated mode. See Dec. 4. Additionally, the Examiner has illustrated that Roh’s robot Appeal 2019-004505 Application 15/086,388 3 performs a task, albeit a different task, in the non-authenticated mode, i.e., transmitting a connection request packet to the authentication server and/or connecting to the wireless AP. See Roh’s Fig. 1; see also ¶¶ 27, 30 (“robot capable of providing its own content service” and “a connection request packet . . . from the robot”). Furthermore, the Examiner relies upon Emmertz to teach that it is known for a task performed by a robot to comprise a physical aspect. See Ans. 8. Again, unlike claim 1, because claim 13 recites “one of” and “or,” I believe the claim language necessarily does not require that “a task” be the same task in the authentication and non-authenticated modes. Claim 13 merely requires that “a task” be perform in either mode, even a different task. The Majority suggesting that claim 13 requires performing the same task in both modes would be equivalent to carving the terms “one of” and “or” out of claim 13. Because I believe that claim 13 does not require performing the same task in both modes, i.e., the Examiner does not also have to illustrate that Roh is capable of performing the same task in a non- authenticated mode, I would affirm the Examiner’s rejection of claims 13, 14, 16, and 17 under 35 U.S.C. § 103.