Ex Parte Asada et al

Patent Trials and Appeals BoardFeb 27, 2019

13287424 - (D) (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/287,424 11/02/2011 Haruhiko Harry Asada 55740 7590 02/27/2019 Gesmer Updegrove LLP 40 Broad Street BOSTON, MA 02109 UNITED ST A TES OF AMERICA 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MIT.14819K 8402 EXAMINER O'CONNOR, MARSHALL P ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 02/27/2019 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARUHIKO HARRY ASADA, ANIRBAN MAZUMDAR, IAN C. RUST, and JUN FUJITA Appeal 2018-002848 Application 13/287 ,424 Technology Center 3600 Before JOHN C. KERINS, EDWARD A. BROWN, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 2, 6-10, and 21. 1 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE The independent claims on appeal, claims 1 and 21, reproduced below, are exemplary of the subject matter on appeal. 1 Appeal is taken from the Non-Final Office Action dated April 13, 2017. Appeal2018-002848 Application 13/287,424 1. An inspection robot for inspecting a nuclear reactor compnsmg: an inspection hull; an on-board control mechanism that controls the operation of the inspection robot, the on-board control mechanism controls one or more sensors of the inspection robot to inspect one or more structures in the nuclear reactor as well as the movement by the inspection robot, said inspection robot includes a smooth outer surface, said inspection robot includes said one or more sensors; a gimbal mechanism that rotates the hull by shifting the center-of-mass so that gravity and buoyancy forces generate a moment to rotate the hull in a desired direction; a camera that is coupled to the gimbal mechanism to provide visual display of the one or more structures in the nuclear reactor, the camera rotates about an axis using the gimbal mechanism; and a wireless communication link which allows the inspection robot to communicates [sic] wirelessly to an operator at a remote station, the operator issues commands to the inspection robot using the wireless communication link so as to perform various inspection tasks using the on-board control mechanism, the gimbal mechanism, and the camera, wherein the inspection robot communicates its findings with respect to the inspection tasks to the operator using the wireless communication link to determine if the internal components of the inspection robot fail during an inspection, wherein if a failure occurs the inspection robot uses a homing procedure to return to its original position prior to the inspection. 21. An inspection robot comprising: a hull; a gimbal mechanism that rotates the inspection robot hull by shifting the center-of-mass so that gravity and buoyancy forces generate a moment to rotate the hull in a desired direction; and a camera that is coupled to the gimbal mechanism and that rotates about an axis using the gimbal mechanism. 2 Appeal2018-002848 Application 13/287,424 THE REJECTIONS I. Claims 1, 2, and 6-9 stand rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite. 2 II. Claim 21 stands rejected under 35 U.S.C. Â§ I02(b) as anticipated by Salkeld (US 2011/0290937 Al; published Dec. 1, 2011). III. Claims 1, 2, and 6-9 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Asfar (US 7,290,496 B2; issued Nov. 6, 2007), Salkeld, and Oakley (US 2011/0301784 Al; published Dec. 8, 2011). IV. Claim 10 stands rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Asfar, Salkeld, Oakley, and Mukherjee (US 6,289,263; issued Sept. 11, 2001 ). ANALYSIS Rejection I Regarding the limitation recited in independent claim 1 as set forth supra, "wherein the inspection robot communicates its findings with respect to the inspection tasks ... to determine if the internal components of the inspection robot fail during an inspection," the Examiner finds it is unclear how the communication of the findings relative to the inspection tasks determine if the internal components of the robot have failed. Non-Final Act. 4; Ans. 4. Additionally, regarding the limitation recited in independent claim 1 as set forth supra, "wherein if a failure occurs the inspection robot uses a homing procedure to return to its original position prior to the inspection," the Examiner finds that "it is unclear if the failure that triggers 2 The Examiner's inclusion of claim 10 in Rejection I has been withdrawn. Ans. 4; Non-Final Act. 4. 3 Appeal2018-002848 Application 13/287,424 the homing procedure ... is referring to a failure in the reactor or in the robot." Non-Final Act. 4; Ans. 4. Appellants submit that "[i]t is well understood the preamble has no patentable weight" and dispute whether the preamble is required to recite how the communication of inspection tasks determines if the robot's internal components have failed. Appeal Br. 7. Appellants argue that the Examiner is "not assessing the full brea[ d]th of the claims and focusing on a selective portion of claim 1 to insist [on] a change to the preamble." Id. Appellants further submit that the Examiner is unnecessarily requiring the narrowing of claim 1 to include "details of indicating a failure to the operator." Reply Br. 7. A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim "contains words or phrases whose meaning is unclear." In re Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal 2015- 006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) ( adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Generally, a preamble is not limiting where an applicant defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). We agree with Appellants that the language "for inspecting a nuclear reactor" in the preamble of claim 1 is a statement of use for the claimed inspection robot, and also that, with respect to the body of the claim, the recitation, "to inspect one or more structures in the nuclear reactor," is a 4 Appeal2018-002848 Application 13/287,424 statement of use for the claimed on-board control mechanism that controls sensors, and the recitation, "to provide visual display of the one or more structures in the nuclear reactor," is a statement of use for the claimed camera, neither of which require additional structure or further limit the claimed inspection robot. Notwithstanding, the Examiner's rejection does not rely on whether the preamble is given patentable weight, but rather, the Examiner correctly construes claim 1 as requiring the communication by the robot of inspection task findings to the operator to be determinative of a failure of the robot's internal components. In other words, the Examiner's issue with claim 1 is that there is no explanation as to how inspection task findings sent to the operator indicate that there is an internal component failure within the robot. We determine that the claim language is clear: the robot's inspection task findings determine if internal components in the robot have failed. In the event the Examiner determines that the Specification fails to support the subject matter claimed, rejections may be made pursuant to 35 U.S.C. Â§ 112, first paragraph, which addresses a lack of written description and/or enablement of the claims as provided by the specification. 3 Additionally, we determine that claim 1 is clear that it is a determination of the failure of the internal components of the robot that triggers the claimed homing procedure. In this respect, we interpret the recitation in claim 1 of "prior to the inspection" as modifying the "original position," and not pertaining to the timing of the homing procedure. 3 Notably, the disputed limitation, which did not appear in the claims as originally filed, was added by an Amendment dated Oct. 26, 2015, which provided no indication of subject matter support from the Specification. 5 Appeal2018-002848 Application 13/287,424 Accordingly, we do not sustain the Examiner's rejection of independent claim 1, and claims 2 and 6-9 depending therefrom, under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Re} ection II Regarding independent claim 21, the Examiner finds that Salkeld discloses an inspection robot (i.e., unmanned aerial vehicle (UA V) 10) including a gimbal mechanism (i.e., tilt motor 26) that rotates the vehicle's hull by shifting the center-of-mass so that gravity and buoyancy forces generate a moment to rotate the hull in a desired direction, as claimed. Non- Final Act. 5 (citing Salkeld ,r,r 28-30, Figs. 1, 2). Appellants acknowledge that Salkeld's tilt motor 26 achieves displacement of the center of gravity of the UA V. Appeal Br. 11. Appellants argue, however, that Salkeld "makes no mention of shifting the center-of-mass so that gravity and buoyancy forces generate a moment," because Salkeld's invention "is an aircraft [that] does not require buoyancy." Id.; Reply Br. 10-11. The Examiner responds by defining the claim term "buoyancy" as ordinarily meaning "the difference of an object's density and the fluid or gas it displaces." Ans. 6. The Examiner finds that claim 1 does not specify the fluid relative to the claimed buoyancy forces and determines that, with respect to Salkeld's motor 26, "[ w ]hile the aircraft has a negative buoyancy in air and does not float independently of other actions, buoyancy forces act on the apparatus and must be accounted for by the device to achieve flight, rotation and/ or movement." Id. ( emphasis added). Salkeld discloses that 6 Appeal2018-002848 Application 13/287,424 the U AV may act as a pendulum, consisting of a suspension point (the set(s) of rotary wings) with a mass attached to the other end (the rest of the UA V, e.g. the power unit, support system, surveillance system etc.). It is well known that when the mass of a pendulum is moved out from under its suspension point and released, it will swing to get back to its original stable position .... In the present invention, a mass is moved out from under its suspension point, but is the maintained in such a non- equilibrium position. Thus the [center-of-gravity (CoG)] of the UA Vis controllably displaced, and the wing section (12) is tilted (in effect, dragged down) in the direction of the shift of the mass in an attempt to compensate. This causes the UA V to move in the direction that the blades (20) are now tilted, and the blades will remain in that state until the mass returns to hang directly under the centre of lift. Salkeld ,r,r 34, 35. Thus, Salkeld does not explicitly describe buoyancy forces. When relying upon the theory of inherency, "the [E]xaminer must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art." Ex Parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990). Although Salkeld is silent about buoyancy, the Examiner has provided technical reasoning to reasonably support the determination that buoyancy is a force that inherently contributes to generate the moment for rotating Salkeld's UA V, by determining that buoyancy forces act on an aircraft during flight, as set forth supra. Further, Appellants' conclusory statement that "an aircraft ... does not require buoyancy" is insufficient to show error in the Examiner's determination that buoyancy forces relative to Salkeld's UA Vin air inherently contribute to forces that generate the moment that rotates Salkeld's UA Vin a desired 7 Appeal2018-002848 Application 13/287,424 direction. In re Pearson, 494 F.2d 1399, 1404 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of evidence."). Accordingly, on the record before us, we sustain the Examiner's rejection of claim 21 under 35 U.S.C. Â§ 102(b) as anticipated by Salkeld. Rejection III Regarding independent claim 1, the Examiner finds, inter alia, that Asfar discloses an inspection robot (i.e., unmanned autonomous submarine 100) having a mechanism that rotates the hull by shifting the center-of-mass so that gravity and buoyancy forces generate a moment to rotate the hull in a desired direction, and also discloses a wireless communication link (i.e., remote control (RC) system 2612). Non-Final Act. 7-8 (citing Asfar 12:21 +, Figs. 1-3, 13-22). The Examiner determines that Asfar does not disclose that the mechanism is a gimbal mechanism, as claimed, and the Examiner relies on Salkeld for teaching a gimbal mechanism (i.e., tilt motor 26) that rotates the hull by shifting the center-of-mass so that gravity and buoyancy forces generate a moment, as claimed. Id. at 8 ( citing Salkeld ,r 28). The Examiner reasons that it would have been obvious to modify Asfar's robot (or submarine 100) "for the predictable result of allowing the robot to have inherent positioning over a target for vertical or near vertical inspection." Id. The Examiner also determines that Asfar does not disclose that RC system 2612 is capable of performing a homing procedure to return the robot to its original position, as claimed, and the Examiner relies on Oakley for teaching a "fail-safe mechanism" that "performs the homing procedure to allow the inspection robot [(i.e., reduced scale helicopter 100)] to go back to 8 Appeal2018-002848 Application 13/287,424 the original start point ... wherein the fail-safe mechanism detects a failure in the wireless communication." Id. at 8-9 (citing Oakley ,r,r 149-153). The Examiner reasons that it would have been obvious to modify Asfar's submarine "for the predictable result of returning and shutting down the robot to the user in the event of adverse conditions to prevent further damage to the machine." Id. at 9. Appellants argue that the Examiner's proposed combination "does not teach or suggest an operator using the wireless communication link to determine if the internal components of the inspection robot fail during an inspection," as claimed. Appeal Br. 9. In particular, Appellants submit that "without the communication link there is no way the inspection robot can communicate its findings with respect to the internal components." Reply Br. 8. We are persuaded by Appellants' argument. Claim 1, as set forth and construed supra, requires the inspection robot to communicate inspection task findings to the operator using the wireless communication link, and claim 1 further requires that the communicated findings are determinative of whether the robot's internal components have failed during the inspection. Oakley's disclosure that a lack of wireless communication with the operator triggers Oakley's helicopter to return home (Oakley ,r,r 149-150) fails to disclose that inspection task findings, which are communicated to the operator via a wireless link between the operator and the helicopter, are determinative of an internal component failure within the helicopter. In other words, although a lack of communication with the helicopter may suggest that the internal wireless communication components within the helicopter have failed, such a failure is not positively determined by 9 Appeal2018-002848 Application 13/287,424 inspection findings that are communicated to the operator via the wireless communications link. Accordingly, we do not sustain the Examiner's rejection of independent claim 1, and claims 2 and 6-9 depending therefrom under 35 U.S.C. Â§ 103(a) as unpatentable over Asfar, Salkeld, and Oakley. Re} ection IV The Examiner's reliance on Mukherjee for teaching a robot with a gimbal mechanism that generates two orthogonal axes of body rotations by moving a mass in two directions does not cure the deficiencies in the Examiner's findings with respect to Oakley and as applied to claim 1 supra. See Rejection III; Non-Final Act. 9. Accordingly, we do not sustain the Examiner's rejection of claim 10. DECISION The Examiner's rejection of claims 1, 2, and 6-9 under 35 U.S.C. Â§ 112, second paragraph, as indefinite is REVERSED. The Examiner's rejection of claim 21 under 35 U.S.C. Â§ 102(b) as anticipated by Salkeld is AFFIRMED. The Examiner's rejection of claims 1, 2, and 6-9 under 35 U.S.C. Â§ 103(a) as unpatentable over Asfar, Salkeld, and Oakley is REVERSED. The Examiner's rejection of claim 10 under 35 U.S.C. Â§ 103(a) as unpatentable over Asfar, Salkeld, Oakley, and Mukherjee is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED-IN-PART 10