Ex Parte Massanell et al

Patent Trial and Appeal BoardApr 26, 2018

13579576 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/579,576 08/17/2012 95683 7590 04/30/2018 Ley dig, Voit & Mayer, Ltd. (Frankfurt office) Two Prudential Plaza, Suite 4900 180 North Stetson Avenue Chicago, IL 60601-6731 FIRST NAMED INVENTOR Javier Massanell 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. 812938 2294 EXAMINER TEITELBAUM, MICHAELE ART UNIT PAPER NUMBER 2422 NOTIFICATION DATE DELIVERY MODE 04/30/2018 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): chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAVIER MASSANELL, THOMAS MAY, and MANFRED STROBEL Appeal2017-000463 Application 13/579,576 Technology Center 2400 Before JUSTIN BUSCH, JOHN D. HAMANN, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Non-Final Rejection of claims 8-16, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). An oral hearing was held on April 17, 2018. We reverse. 1 According to Appellants, the real party in interest is ifm electronic gmbh. App. Br. 1. Appeal2017-000463 Application 13/579,576 INVENTION Appellants' invention relates to a monitoring system. Abstract. Claim 8 is illustrative and reads as follows, with disputed limitations italicized: 8. A monitoring system, comprising: at least one three-dimensional (3D) time-of-flight (TOP) camera configured to monitor a safety-critical area; an evaluation unit configured to activate a safety function upon an entrance of at least one of an object and a person into the monitored area and to suppress the activation of the safety function where at least one clearance element is recognized as being present on the at least one of the object and the person, the at least one clearance element including a marking that is detectable by the at least one 3D TOF camera and identifies the at least one clearance element based on at least one of a specified optical property and a specified geometrical property of the marking. App. Br. 11 (Claims App'x) (emphasis added). REJECTIONS 2 Claims 8, 9, 11, 12, and 14--16 stand rejected under pre-AIA 35 U.S.C. Â§ 102(b) as anticipated by Stein et al. (US 2009/0316135 Al; published Dec. 24, 2009) ("Stein"). Claims 10 and 13 stand rejected under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Stein and Lehner et al. (US 2001/0041077 Al; published Nov. 15, 2001). 2 In the Answer, the Examiner withdrew the rejection of claims 8-16 under 35 U.S.C. Â§ 112, first paragraph, for lack of written description. Ans. 10. 2 Appeal2017-000463 Application 13/579,576 ANALYSIS Appellants contend the Examiner erred because the cited portions of Stein do not disclose "a marking that ... identifies the at least one clearance element based on at least one of a specified optical property and a specified geometrical property of the marking," as recited in claim 8. App. Br. 11. Appellants argue that "the claims require the marking to be part of a clearance element which is present on an object or person. Thus, an object or person cannot be considered to meet the limitations of either the clearance element or the marking recited in the claims of the present application." App. Br. 7. In rejecting the claims, the Examiner concluded that "the teaching of a clearance element itself is a teaching of a 'marking' provided the clearance element can be identified by a specified optical and/or geometric property." Ans. 14. Applying this interpretation of "marking," the Examiner concluded that Stein's teaching of a contour falls within the meaning of the term "marking." Id. at 15. In particular, the Examiner found that Stein discloses a "marking" because the speed distribution detected by the 3 D camera in Stein has a specified optical and/or geometric property. Id. We are persuaded that the Examiner erred. To accept the Examiner's position here would require us to read out one of the claim limitations, "a marking," which would be counter to existing claim construction principles. Bicon, Inc. v. Straumann Co., 441 F.3d. 945, 950 (Fed. Cir. 2006) (claims are interpreted with an eye toward giving effect to all terms in the claim); see Tex. Instruments Inc. v. U. S. Int 'l Trade Comm 'n, 988 F .2d 1165, 1171 (Fed. Cir. 1993) (explaining claim language cannot be mere surplusage, an express limitation cannot be read out of the claim). 3 Appeal2017-000463 Application 13/579,576 The Examiner's interpretation of "marking" is inconsistent with the plain language of claim 8, which requires "at least one clearance element is recognized as being present on the at least one of the object and the person, the at least one clearance element including a marking .... " See App. Br. 11. The Examiner's interpretation reads "marking" out of claim 8 because, according to the Examiner, the recited "clearance element" itself can be the marking. See Ans. 14 (citing Spec. i-f 19). As the Federal Circuit recently emphasized in Smith: Even when giving claim terms their broadest reasonable interpretation, the Board cannot construe the claims "so broadly that its constructions are unreasonable under general claim construction principles." Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015). The correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner. And it is not simply an interpretation that is not inconsistent with the specification. It is an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is "consistent with the specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). In re Smith Int'!, Inc., 871F.3d1375, 1382-83 (Fed. Cir. 2017). Applying Smith's guidance here, the Examiner's claim interpretation of "marking," as recited in each independent claim on appeal, is overly broad, unreasonable, and inconsistent with the Specification. The Specification consistently describes the clearance elements and markings as 4 Appeal2017-000463 Application 13/579,576 separate from each other, and separate from the object or person they are "present on." See, e.g., Spec. Fig 2, i-f 30; see Reply Br. 3. Thus, the Examiner's interpretation is not consistent with what and how the inventor describes the invention in the Specification. See Smith, 871 F.3d at 1382- 83. Moreover, the Examiner has not shown that Stein's disclosure of a speed distribution that has a specified optical and/ or geometric property is "'present on' the at least one of the object and the person," as claim 8 requires. The Non-Final Action contains no findings directed to the "present on" recitation and, although Appellants raised this argument in the Appeal Brief (App. Br. 7), the Examiner did not address it in the Answer. Thus, the Examiner has not demonstrated that Stein discloses every element of claim 8. Accordingly, we reverse the Examiner's 35 U.S.C. Â§ 102(b) rejection of independent claims 8 and 14. See App. Br. 8. We also reverse the Examiner'sÂ§ 102(b) rejection of dependent claims 9, 11, 12, 15, 16, and the Examiner'sÂ§ 103(a) rejection of dependent claims 10 and 13, which was also based on the Examiner's overly broad construction of "marking." See Non-Final Act. 10. DECISION We reverse the Examiner's decision to reject claims 8-16. REVERSED 5