KING SAUD UNIVERSITY

Patent Trials and Appeals BoardOct 30, 2020

2020000206 (P.T.A.B. Oct. 30, 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. 15/916,198 03/08/2018 MOHAMMED MAHDI AHMED AL-GABRI 32809.64 8028 37833 7590 10/30/2020 Richard C. Litman Nath, Goldberg & Meyer 112 S. West Street Alexandria, VA 22314 EXAMINER HULL, JAMES B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 10/30/2020 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): litman@4patent.com tharkins@nathlaw.com uspto_nva@nathlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MOHAMMED MAHDI AHMED AL-GABRI, MANSOUR MOHAMMED A. ALSULAIMAN, HASSAN ISMAIL H. MATHKOUR, MOHAMED ABDELKADER BENCHERIF, MOHAMMED FAISAL ABDULQADER NAJI, MOHAMED AMINE MEKHTICHE, GHULAM MUHAMMAD, and WADOOD ABDUL ____________ Appeal 2020-000206 Application 15/916,198 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and BENJAMIN D. M. WOOD, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated Jan. 23, 2019, hereinafter “Final 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. King Saud University is identified as the real party in interest in Appellant’s Appeal Brief (filed May 13, 2019, hereinafter “Appeal Br.”). Appeal Br. 3. Appeal 2020-000206 Application 15/916,198 2 Act.”) rejecting claims 1, 3, 5, and 7–15.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. INVENTION Appellant’s invention relates “to a portable robot for two-way communication with the hearing-impaired.” Spec. para 1. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A portable robot for two-way communication between a non-hearing impaired user and a hearing-impaired user, the portable robot comprising: a base; a first connection; a torso mounted on the base via the first connection, the torso having a generally planar triangular configuration including a front, a back, a bottom, a left top, a right top and a center top; a left arm and a first shoulder joint, the left arm having a proximate end and a distal end, the proximate end being mounted to the left top of the torso via the first shoulder joint, the left arm including a first elbow joint; a left hand and a first wrist joint, the left hand being mounted on the distal end of the left arm via the first wrist joint, the left hand having a first little finger, a first ring finger; a first middle finger, a first index finger and a first thumb; 2 Claims 2, 4, 6, and 16–19 are canceled. Supplemental Appeal Brief (filed June 3, 2019, hereinafter “Suppl. Appeal Br.”) 5, 6, 10. Appeal 2020-000206 Application 15/916,198 3 at least one first servo motor and a first servo controller connected to the first servo motor, the fingers each being connected to and moved by the at least one first servo motor as controlled by the first servo controller; a right arm and a second shoulder joint, the right arm having a proximate end and a distal end, the proximate end being mounted to the right top of the torso via the second shoulder joint, the right arm including a second elbow joint; a right hand and a second wrist joint, the right hand being mounted on the distal end of the right arm via the second wrist joint, the right hand including a second little finger, a second ring finger; a second middle finger, a second index finger and a second thumb; at least one second servo motor and a second servo controller, the fingers each being connected to and moved by the at least one second servo motor as controlled by the second servo controller; a neck joint; a head rotatably mounted on the center top of the torso via the neck joint, the head having a front surface facing the hearing impaired user, a first side surface, a second side surface, a first display screen mounted on the front surface, a 3D camera mounted on the front surface, a robot microphone mounted on the front surface, a first robot speaker mounted on the first side surface and a second robot speaker mounted on the second side surface; a housing mounted on the back of the torso, the housing having a second display screen mounted thereon and facing the non-hearing impaired user; and a control system including a vision-based active recognition module, a speech processing module having a text-to-speech module and a speech-to-text module, and a robot control and sign language generation module; wherein: the vision-based active recognition module receives a video signal from the 3D camera and compares gestures and facial expressions in the video signal to video databases to translate the gestures and facial expressions of the hearing impaired user to a translated text, wherein the translated text is displayed on the second display screen; Appeal 2020-000206 Application 15/916,198 4 the text-to-speech module receives the translated text from the vision-based active recognition module and synthesizes the translated text into synthesized speech; the synthesized speech is sent to the first and second speakers; the robot microphone receives an audio signal from the non-hearing impaired user and sends the audio signal to the speech-to-text module; the speech-to-text module segments any speech detected in the audio signal into speech segments; the segments are recognized as their corresponding phonemes by comparing the segments with a segment/phoneme speech database; the corresponding phonemes are concatenated into concatenated text; the concatenated text is sent to the robot control and sign language generation module; the robot control and sign language generation module controls: the first display screen to provide facial expressions associated with the concatenated text; and the first and the second servo controllers to provide at least hand and finger movements associated with the concatenated text. See Suppl. Appeal Br. 3–5 REJECTIONS3 I. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C. § 112(b) as being indefinite. 3 The Examiner has withdrawn the rejections of claim 5 under 35 U.S.C. §§ 112(a) and 112(b). See Examiner’s Answer (dated Aug. 8, 2019, hereinafter “Ans.”) 7; Final Act. 3, 4. Appeal 2020-000206 Application 15/916,198 5 II. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement. III. The Examiner rejects claims 1, 3, 5, and 7–15 under 35 U.S.C. § 101 and Section 33(a) of the American Invents Act as being directed to, or encompassing, a human organism. ANALYSIS Rejection I—Indefiniteness Claims Directed to Both an Apparatus and a Method The Examiner first finds that independent “claim 1 recites a product (i.e., portable robot), but also recite[s] a process (i.e., receives a video signal; receives the translated text; receives an audio signal; segments any speech; controls).” Final Act. 3. Thus, according to the Examiner, “[b]ecause Applicant is claiming two separate statutory classes together in a single claim, claim 1 and the dependent claims thereof are deemed indefinite.” Id. In response, Appellant argues that the recited process steps “are merely functional statements of the corresponding structure.” Appeal Br. 16. It is well settled that a claim reciting both an apparatus and a method of using that apparatus is indefinite. See, e.g., IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). In this case, however, although we appreciate the Examiner’s concern that “claim [1] recites the step[s] in [the] present tense” and does not include “a linking phrase (e.g., configured to” or “for”),” nonetheless, we agree with Appellant that the recited steps do not describe a method (process) of operation of the Appeal 2020-000206 Application 15/916,198 6 claimed portable robot, but rather, represent functional limitations, that is, a description of the function of the apparatus (product). See Appeal Br. 16. For example, the limitations “receives a video signal from the 3D camera and compares gestures and facial expressions in the video signal to video databases to translate the gestures and facial expressions of the hearing impaired to a translated text” that is “displayed on the second display screen” describe how the “vision-based active recognition module” of the portable robot functions. See Suppl. Appeal Br. 4 (emphasis added). Moreover, as discussed infra, the Examiner finds that the limitation of “a vision-based active recognition module” invokes 35 U.S.C. § 112(f), and, thus, the disputed limitations noted above merely describe the function of the “vision-based active recognition module.” Accordingly, for the foregoing reasons, we agree with Appellant that “[t]wo different statutory classes are not being indefinitely intertwined” in claim 1, and, thus, we are not persuaded that claim 1 recites both an apparatus (product) and a method. See Appeal Br. 16, 17. Indefinite Claim Language The Examiner further finds that “the limitation[s] of ‘the synthesized speech is sent’, ‘the segments are recognized’, and ‘the corresponding phonemes are concatenated’” of claim 1 are indefinite because “[t]he claim does not specify what component (element) performs these functions.” Final Act. 4. In response, Appellant argues that the disputed limitations “are merely functional statements of the corresponding structure.” Appeal Br. 17. Appeal 2020-000206 Application 15/916,198 7 We appreciate that the disputed limitations are functional in nature; however, it is not clear which component of the claimed portable robot performs the recited function. Even though Appellant’s Specification describes text-to-speech module 602 as sending synthesized speech to speaker 111 (see Spec. para. 39, Fig. 9), we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, we agree with the Examiner that claim 1 “does not identify if any of the . . . [claimed] components performs these steps, or if they are performed by another component [of the claimed portable robot] or by hand.” Ans. 5. In a similar manner, it is not clear which of the components (elements) of the claimed portable robot perform the recited functions of “the segments are recognized” and “the corresponding phonemes are concatenated” of claim 1. See Suppl. Appeal Br. 4–5. Accordingly, we agree with the Examiner that such limitations render independent claim 1 indefinite. See Ans.10. Means-plus-function The Examiner interprets the limitations of a “control system including a vision-based active recognition module,” a “speech processing module having a text-to-speech module and a speech-to-text module,” and “a robot control and sign language generation module” as invoking 35 U.S.C. § 112(f) because “they use generic placeholders (i.e., module) without any corresponding structure or functional limitations to invoke 112(f).” Final Act. 2. The Examiner further finds that “[t]he language preceding the term ‘module’ . . . is not a structural modifier, but rather merely describes the Appeal 2020-000206 Application 15/916,198 8 intended use or result.” Id. Thus, according to the Examiner, as “it is unclear the metes and bounds of these limitations,” independent claim 1 is indefinite. Id. In response, Appellant argues that the features of means-plus-function limitations noted above “are well-understood, routine, and conventional in the art as understood by a person of ordinary skill,” and, thus, “there is no need to describe them in detail in the [S]pecification.” Appeal Br. 15 (citing Williamson v. Citrix Online, LLC, 792 F.3d 1339 (Fed. Cir. 2015)). As evidence that a “detailed description is not essential for a proper understanding of the invention,” Appellant points to paragraphs 34–41 and Figures 6–11 of the Specification, US Patents 5,857,099 (issued Jan. 5, 1999, hereinafter “Mitchell”), 8,538,386 B2 (issued Sept. 17, 2013, hereinafter “May”), 8,566,075 B1 (issued Oct. 22, 2013, hereinafter “Bruner”), 8,831,279 B2 (issued Sept. 9, 2014, hereinafter “Rodriguez”), 9,800,955 B2 (issued Oct. 24, 2017, hereinafter “An”), and Maliki et al., Robotic Hands to Teach Sign Language, 30th Florida Conference on Recent Advances in Robotics, May 11–12, 2017, Florida Atlantic University, Boca Raton, Florida (hereinafter “Maliki”). See Appeal Br. 15 At the outset, we note that generic terms such as “mechanism,” “element,” “device,” and other nonce words that reflect nothing more than verbal constructs may be used in a claim in a manner that is tantamount to using the word “means” because they “typically do not connote sufficiently definite structure” and therefore may invoke section 112, para. 6. See Cole v. Kimberly-Clark Corp., 102 F.3d 524, 531 (Fed. Cir. 1996) (“To invoke [35 U.S.C. § 112, ¶ 6], the alleged means-plus-function claim element must not recite a definite structure which performs the described function.”). Appeal 2020-000206 Application 15/916,198 9 Here, although independent claim 1 does not use the term “means,” nonetheless, claim 1 includes the non-structural generic term “module.” See Suppl. Appeal Br. 4 (Claims App.). Furthermore, use of the phrases “vision- based active recognition,” “speech processing,” “text-to-speech,” “speech- to-text,” and “robot control and sign language generation” do not modify the term “module” to recite sufficiently definite structure to preclude the invocation of 35 U.S.C. § 112(f), but merely describe the function of the “module.”4 Accordingly, for the foregoing reasons, we construe the limitations of “a vision-based active recognition module,” “a speech processing module having a text-to-speech module and a speech-to-text module,” and “a robot control and sign language generation module,” as recited by independent claim 1, as invoking 35 U.S.C. § 112(f), and, thus, as being limited to “the structure, materials, or acts described in the [S]pecification . . . corresponding to the claimed function and equivalents thereof.” Williamson, 792 F. 3d at 1347–48 (citing Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed. Cir. 2003)). The proper test for meeting the definiteness requirement is that the corresponding structure (or material or acts) of a means- (or step-) plus-function limitation must be disclosed in the Specification itself in such a manner that a person of ordinary skill in art would readily understand what structure (or material or acts) will perform 4 For example, although the function “to translate the gestures and facial expressions of the hearing impaired user to a translated text” is performed by the “vision-based active recognition module,” the generic act of “compares gestures and facial expressions in the video signal to video databases” is not sufficient to impart structure. See e.g., Suppl. Appeal Br. 4. Appeal 2020-000206 Application 15/916,198 10 the recited function. See e.g., Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999). Firstly, we agree with the Examiner that Appellant’s “[S]pecification is silent as to any . . . definition” of the disputed means-plus-function limitations noted above “either by hardware structure or software algorithm.” Id. at 5. The Examiner is correct that paragraphs 34–41 and Figures 6–11 of the Specification “merely repeat[] the above [means-plus- function] limitations in question as generic placeholders, without further defining them with any specificity.” Final Act. 6. Specifically, Appellant’s Figures 6–11 “are essentially black box schematics with no explanation of the underlying operations being performed, and . . . [paragraphs 34–41 of the] specification describe[] the features in the same generic nature as claimed.” Ans. 8 (emphasis added). Moreover, Appellant’s mere citation of paragraphs 34–41 and Figures 6–11 of the Specification (see Appeal Br. 15) fails to adequately explain what corresponding “structure is provided in these passages and drawings, nor how these passages or drawings provide sufficient corresponding structure, materials, or acts to accomplish the result-based limitations performed by the various modules.” Ans. 8. For example, even though Appellant’s Specification describes Figure 8 as a “flowchart 800 of the functions of the speech-to-text (STT) module” (see Spec. para. 38), Figure 8 fails to describe an algorithm for performing the claimed functions, i.e., detects speech, segments speech, recognizing speech by their corresponding phenomes, and concatenating the phenomes into text. See Aristocrat Techs. Austl. Pty. Ltd. V. International Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). The Federal Circuit has held that “the Appeal 2020-000206 Application 15/916,198 11 [S]pecification can express the algorithm ‘in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’” Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. Cir. 2012) (citing Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)). Here, Appellant’s Specification provides neither a mathematical formula, a flow chart, nor any prose description of the claimed modules noted above. Hence, the Examiner is correct that Appellant’s reliance on paragraphs 34– 41 and Figures 6–11 of the Specification “is merely conclusory.” Id. Secondly, we appreciate Appellant’s reliance on prior art to evidence that each of the disputed means-plus-function limitations noted above is an art-recognized structure to perform the claimed function; however, “[s]imply mentioning prior art references in a patent does not suffice as a specification description to give the patentee outright claim to all of the structures disclosed in those references.” Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1317 (Fed. Cir. 2010). Neither is Appellant’s mere statement in the Appeal Brief that the cited references “are incorporated herein by reference” persuasive that each of the disputed means-plus-function limitations noted above is an art-recognized structure to perform the claimed function because Appellant’s Specification does not “incorporate by reference” the cited references. See Appeal Br. 15; see also Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1381 (Fed. Cir. 1999) (The Specification incorporated by reference a non-patent document from a technical journal.). Furthermore, we agree with the Examiner that “Appellant provides no [adequate] explanation or citations to any of . . . [listed] references to Appeal 2020-000206 Application 15/916,198 12 support the argument why any of the features identified in the final office action as indefinite are well-known, routine and conventional.” Ans. 8. In particular, even considering Appellant’s position that May and Rodriguez disclose a “text-to-speech module” and a “sign language analysis module,” respectively, the Examiner is correct that such features “are not disclosed in the same configuration and for the same step or function claimed in the present application.” Id. For example, we agree with the Examiner that May “is silent to any synthesizing step” and Rodriguez “is silent to any display with facial expressions or servo control.” Id. As such, the Examiner is correct that Appellant’s mere citation to prior art and reliance on material “incorporated by reference,” without an adequate explanation to support the position that the features of each of the means-plus-function limitations noted above are well-known, routine, and conventional, “is merely conclusory.” Id. Accordingly, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 112(b) of claims 1, 3, 5, and 7–15 as being indefinite. Rejection II—Written Description The Examiner finds that Appellant’s original disclosure does not support “a control system including a vision-based active recognition module,” “a speech processing module having a text-to-speech module and a speech-to-text module,” and “a robot control and sign language generation module,” as recited by independent claim 1. Final Act. 4. According to the Examiner, “neither the claims nor the specification define a corresponding structure or algorithm for defining what constitutes these modules or how they operate.” Id. Appeal 2020-000206 Application 15/916,198 13 In response, Appellant once more argues that the features of means- plus-function limitations noted above “are well-understood, routine, and conventional in the art as understood by a person of ordinary skill,” and, thus, “there is no need to describe them in detail in the [S]pecification.” Appeal Br. 19 (emphasis added). As evidence that a skilled artisan would readily understand the scope of the claims, Appellant once again relies on paragraphs 34–41 and Figures 6–11 of the Specification, and the Mitchell, May, Bruner, Rodriguez, An, and Maliki disclosures. See Appeal Br. 18–19. We are not persuaded by Appellant’s arguments for the same reasons discussed supra, namely, that the corresponding structure (or material or acts) of the disputed means-plus-function limitations are not disclosed in the Specification itself in such a manner that a person of ordinary skill in art would readily understand what structure (or material or acts) will perform the recited functions. Also, for the same reasons discussed supra, we are not persuaded by Appellant’s reliance on the Mitchell, May, Bruner, Rodriguez, An, and Maliki disclosures to evidence that the features of the disputed means-plus-function limitations are “are well-understood, routine, and conventional in the art as understood by a person of ordinary skill.” Hence, for the same reasons discussed above, a skilled artisan cannot discern what structure will perform the recited functions of the disputed means-plus-function limitations. Accordingly, Appellant’s original disclosure does not support “a control system including a vision-based active recognition module,” “a speech processing module having a text-to-speech module and a speech-to-text module,” and “a robot control and sign language generation module,” as recited by independent claim 1. Final Act. 4. Appeal 2020-000206 Application 15/916,198 14 Therefore, as the Specification fails to provide adequate descriptive support for the corresponding structure of the above noted means-plus- function limitations, we sustain the rejection under 35 U.S.C. § 112(a) of claims 1, 3, 5, and 7–15 as failing to comply with the written description. Rejection III—Ineligible Subject Matter The Examiner finds that independent claim 1 recites, inter alia, a “hearing impaired user” and a “non-hearing impaired user,” “which under the broadest reasonable interpretation includes a human being,” and, thus, “are directed to patent ineligible subject matter.” Final Act. 5. According to the Examiner, “[t]he recited ‘hearing impaired user’ and ‘non-hearing impaired user’ is . . . interpreted as a required element of . . . claim [1] because the claim uses these terms in the context of active steps to be performed using present tense terminology.” Ans. 7. Appellant argues “that a human is not being claimed,” and, moreover, “claim [1] merely reflects the functionality of the control system and then relates it to the Preamble.” Appeal Br. 20. Independent 1 recites, inter alia, “[a] portable robot for two way communication between a non-hearing impaired user and a hearing-impaired user . . . comprising . . . a head having a front surface facing the hearing impaired user . . . [and] a second display screen . . . facing the non-hearing impaired user.” Suppl. Appeal Br. 4 (Claims App.). The recitations of a hearing impaired user and a non-hearing impaired user in the preamble and in the body of the claim are mere statements of intended use and do not constitute or explain any structural claim limitations. “An intended use or purpose usually will not limit the scope of Appeal 2020-000206 Application 15/916,198 15 the claim because such statements usually do no more than define a context in which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Here, the hearing impaired user and the non-hearing impaired user define the context in which the robot is used by reciting reference points. In particular, the front face of the robot head faces the hearing impaired user in order for the robot to receive a video signal and translate the gestures and facial expressions of the hearing impaired user to a translated text, which is then displayed on the second display screen facing the non-hearing impaired user. Accordingly, for the foregoing reasons, we do not sustain the rejection of claims 1, 3, 5, and 7–15 under 35 U.S.C. § 101 and Section 33(a) of the American Invents Act as being directed to, or encompassing, a human organism. CONCLUSION Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1, 3, 5, 7–15 112(b) Indefinite 1, 3, 5, 7–15 1, 3, 5, 7–15 112(a) Written description 1, 3, 5, 7–15 1, 3, 5, 7–15 101 Ineligible subject matter 1, 3, 5, 7–15 Overall Outcome 1, 3, 5, 7–15 Appeal 2020-000206 Application 15/916,198 16 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED