Ex Parte Wang et al

Patent Trial and Appeal BoardJul 21, 2016

12082396 (P.T.A.B. Jul. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/082,396 04/09/2008 98471 7590 InTouch Health C/O CPA Global P.O.Box 52050 Minneapolis, MN 55402 07/25/2016 FIRST NAMED INVENTOR Yulun Wang 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. P001D3DC 8087 EXAMINER KISWANTO, NICHOLAS ART UNIT PAPER NUMBER 3667 NOTIFICATION DATE DELIVERY MODE 07/25/2016 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, KEITH PHILLIP LABY, CHARLES S. JORDAN, STEVEN EDWARD BUTNER, and JONATHAN SOUTHARD Appeal2014-007898 Application 12/082,396 Technology Center 3600 Before MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and LISA M. GUIJT, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Yulun Wang et al. (Appellants) 1 appeal under 35 U.S.C. Â§ 134 from the Examiner's final decision rejecting claims 92 and 94--99 under 35 U.S.C. Â§ 103(a) as unpatentable over Jouppi (US 6,292,713 Bl, iss. Sept. 18, 2001) and Ruffner (US 2002/0049517 Al, pub. Apr. 25, 2002). Final Act. 2--4. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is InTouch Technologies, Inc. Appeal Br. 2. Appeal2014-007898 Application 12/082,396 THE CLAIMED SUBJECT MATTER Claim 92, the sole independent claim, is reproduced below and is representative of the claimed subject matter on appeal. 92. A robot system, comprising: a remote station that provides robot instructions, said remote station includes a monitor that displays a robot image, said robot instructions are generated while a user views said robot image; a battery recharging station; and, a mobile robot that includes a camera that is coupled to said remote station monitor and captures said robot image, said mobile robot is capable of being coupled to said battery recharging station both in response to said robot instructions and by moving to said battery recharging station autonomously. OPINION Appellants argue claims 92 and 94--99 as a group. Appeal Br. 5-9. We select claim 92 as the representative claim, and claims 94--99 stand or fall with claim 92. 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). The Examiner finds that Jouppi teaches most of the limitations of independent claim 92, including, inter alia, a mobile robot that moves in response to robot instructions that are generated while a user views a robot image on a monitor. Final Act. 2 (citing Jouppi, Abstr., 1:45--46, 14:30-56, Fig. 1 ). The Examiner acknowledges that Jouppi "is silent as to the specifics of a battery recharging station and moving autonomously to said recharging station." Id. As to the mobile robot being capable of being coupled to a battery recharging station in response to robot instructions, the Examiner relies on Ruffner to teach "a commonly well-known battery recharging station." Ans. 3. The Examiner concludes that a desire to "recharg[e] Jouppi's robot would 2 Appeal2014-007898 Application 12/082,396 lead of one of ordinary skill in the art to combine Jouppi with a battery recharging station teaching." Id. at 6; see also Final Act. 3 (explaining that Ruffner' s battery recharging station "provides recharging flexibility by providing options for recharging."). The Examiner's resulting position is that because a user can provide robot instructions to move the robot to any location, the user can provide robot instructions to move the robot to a location that will couple the mobile robot to the battery recharging station (Final Act. 3; Ans. 3), thereby meeting the claim limitation of a "mobile robot ... capable of being coupled to said battery recharging station ... in response to said robot instructions." In other words, the Examiner's position is that "the robot instructions are strictly dependent on the user's action," and "the battery recharging station is merely a particular location that the user can direct the robot towards, requiring no inventive property, merely the presence of said battery recharging station." Ans. 3--4; see also id. at 5 ("[O]nce Ruffner provides the battery recharging station teaching, Jouppi teaches user controlled coupling to the charging station by virtue of the charging station merely being a location that the user can direct the robot towards."). As to the mobile robot being capable of being coupled to the battery recharging station by moving to the battery recharging station autonomously, the Examiner finds that Ruffner teaches a robot system that autonomously moves the mobile robot to a battery recharging station (Final Act. 2 (citing Ruffner i-fi-129, 50, 72-79)) and concludes that it would have been obvious to modify Jouppi to have its mobile robot move to a battery recharging station autonomously "in order to reduce user maintenance with 3 Appeal2014-007898 Application 12/082,396 the device" and "alleviate[] some user maintenance in case the user forgets to order said robot to move to said battery recharging station" (id. at 3). Appellants argue that "Jouppi does not disclose any manner of recharging the robot" and that "Ruffner does not disclose that the robot is capable of being docked ... in response to instructions from a remote station generated while a user views an image from the robot." Appeal Br. 6; see also id. at 8 ("Jouppi does not teach a charging station, much less any manner of coupling the robot with a charging station") and Reply Br. 2 ("[T]o ask whether Ruffner discloses that the robot is capable of being docked with the energy distribution means in response to instructions from a remote station generated while a user views an image from the robot is to ask whether the cited art teaches limitations of the claimed invention."). We are not persuaded by Appellants' arguments in that they fail to address the rejection as articulated by the Examiner which is not based on either reference alone, but on their combination. See In re Keller, 642 F.2d 413, 425-26 (CCP A 1981) (one cannot show nonobviousness by attacking the references individually when the rejection is based on a combination of references). Appellants further argue that J ouppi' s "force feedback mechanism that makes it progressively harder for the user to command the robot in the direction of an approaching object" "teaches away from the notion of manually docketing the robot, since doing so requires the robot be moved into engagement with an object." Appeal Br. 6; see also Reply Br. 2 ("Jouppi teaches an obstacle avoidance system aimed at discouraging the user from causing the robot's housing to make contact with objects in the robot environment" such that "adding a recharging station in a robot system 4 Appeal2014-007898 Application 12/082,396 like Jouppi" would not necessarily result in "a mobile robot that is capable of being coupled to the recharging station in response to commands by the user"). Whether a reference teaches away from a claimed invention is a question of fact. See In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). "A reference may be said to teach away when a person of ordinary skill, upon reading the reference ... would be led in a direction divergent from the path that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tee Air, Inc. v. Denso Mfg. Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). In order to "teach away," a reference must "criticize, discredit, or otherwise discourage the solution claimed." In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004)). We are not persuaded that Jouppi's force feedback mechanism teaches away from a mobile robot that meets the broad claim language of "capable of being coupled to [a] battery recharging station ... in response to ... robot instructions" when a recharging station is added. Appellants have not sufficiently identified where Jouppi criticizes or discourages coupling of its mobile robot to an object. As the Examiner points out, the use of a force feedback joystick might actually "assist[] coupling to the battery recharging station since it would indicate to the user when the robot is getting closer to the station." Ans. 4. Even if the force feedback mechanism is not helpful to users (see Reply Br. 3), we are not persuaded that Jouppi teaches away from coupling to an object. Merely because Jouppi's robot increases the amount of force required to move the joystick as the distance to an object decreases is not a criticism or discouragement of coupling to an object. Appellants further argue that Ruffner teaches away from a mobile robot that is capable of being coupled to a battery recharging station in 5 Appeal2014-007898 Application 12/082,396 response to robot instructions because Ruffner "aims to minimize user interaction with the robot." Appeal Br. 7; see also id. ("Ruffner ... states that once the robot is initialized in its environment, 'the user need have little involvement with the invention."' (quoting Ruffner i-f 29) ). We are not persuaded that Ruffner' s desire to minimize user interaction with the mobile robot teaches away from a mobile robot that is capable of being coupled to a battery recharging station in response to robot instructions, because Appellants have not identified where Ruffner actually criticizes or discourages user instruction, instead of merely indicating a general preference for minimizing user interaction. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not teach away, however, if it merely expresses a general preference for an alternative invention but does not 'criticize, discredit, or otherwise discourage' investigation into the invention claimed." (quoting Fulton, 391F.3dat1201)). Appellants also argue that the Examiner's "reasoning amounts to improper hindsight analysis." Appeal Br. 7. The Examiner has reasoned that one of ordinary skill in the art would be led to modify Jouppi's mobile robot so as to be capable of cooperating with a battery recharging station in order to provide options for recharging, and that one of skill in the art would be led to have the mobile robot move to the battery recharging station autonomously in order to reduce user maintenance with the device. Final Act. 3. This reasoning is sound. 2 Because the Examiner has articulated 2 We have also considered Appellants' argument that one of skill in the art would not be led to combine Jouppi and Ruffner to recharge the robot of Jouppi because "Jouppi and Ruffner are directed to two different types of 6 Appeal2014-007898 Application 12/082,396 adequate reasoning having rational underpinnings in support of the conclusion of obviousness, we determine that the combination is not based on impermissible hindsight, but rather on reasoning advanced by the Examiner. For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that the combination of Jouppi and Ruffner renders obvious the subject matter of claim 92, and we sustain the rejection of claim 92, and claims 94--99 which fall therewith, under 35 U.S.C. Â§ 103(a) as unpatentable over Jouppi and Ruffner. DECISION The Examiner's decision to reject claims 92 and 94--99 under 35 U.S.C. Â§ 103(a) is affirmed. 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)(l )(iv). AFFIRMED robot systems---one that is controlled by a person at all times during use, and another which is intended to limit user involvement as much as possible." Reply Br. 4. Simply that there are differences between two references is insufficient to establish that a prima facie case of obviousness is not possible or that such references teach away from any combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir. 1992). 7