Brooks Automation, Inc.

Patent Trials and Appeals Board

Nov 10, 2020

14469260 - (D) (P.T.A.B. Nov. 10, 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.
14/469,260 08/26/2014 Ulysses Gilchrist 390P014912-US (PAR) 2587
106446 7590 11/10/2020
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
JARRETT, RONALD P
ART UNIT PAPER NUMBER
3652
MAIL DATE DELIVERY MODE
11/10/2020 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 ULYSSES GILCHRIST
____________

Appeal 2020-002249
Application 14/469,2601
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1–25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Brooks
Automation, Inc. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellant’s invention relates “to robotic transport apparatus and, more
particularly, to robotic drive transmissions.” (Spec. ¶ 2.)
Claims 1, 12, 21, and 25 are the independent claims on appeal.
Claim 1 is illustrative. It recites (emphasis and some paragraphing added):

1. A substrate processing apparatus comprising:
a transport arm having serially connected arm links, at
least one of the arm links having a predetermined arm link
height;
at least a first pulley and a second pulley, where the second
pulley is fixed to an arm link of the serially connected arm links;
and
a multiband torque transmission with more than one
independent unidirectional torque transmission band
each of which extends longitudinally continuously
between and independently coupled to each of the first
pulley and the second pulley so that
each torque load transmission, between the first
pulley and the second pulley, by each of the more than one
independent unidirectional torque transmission band
between the first pulley and the second pulley imparts,
under torque load, a substantially constant
unidirectional uniaxial tension load throughout a
respective one of the more than one independent
unidirectional torque transmission band substantially
continuously throughout a whole span length of the
respective one of the more than one independent
unidirectional torque transmission band extending in
whole from the first pulley to the second pulley,
each of the more than one independent
unidirectional torque transmission band having a
corresponding band height for the predetermined arm link
height and a variable lateral thickness
such that each of the more than one independent
unidirectional torque transmission band includes a
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segment of laterally increased cross section for the
corresponding band height,
the segment of laterally increased cross section
being distinct from and disposed between end couplings
located at a respective terminus of the respective one of
the more than one independent unidirectional torque
transmission band
coupling opposite ends of the respective one of the
more than one independent unidirectional torque
transmission band respectively to each of the first pulley
and the second pulley.

OBJECTION AND REJECTIONS
The Amendment to the Specification filed July 24, 2017, is objected
to under 35 U.S.C. § 132(a) because it introduces new matter into the
disclosure.
Claims 1–25 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
Claims 1–25 are rejected under 35 U.S.C. § 112(b) as being indefinite
for failing to particularly point out and distinctly claim the subject matter
which the inventor regards as the invention.
Claims 1–25 are rejected under 35 U.S.C. § 103 as unpatentable over
Solomon (US 6,428,266 B1, iss. Aug. 6, 2002) and Sakada (JP 2002-
093881, pub. Mar. 29, 2002).2

2 As used herein, “Sakada” refers to the translation of record dated
June 2019.
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ANALYSIS
The new matter objection and § 112(a) rejection
The Examiner finds that “the claims contain the newly amended
limitation[] ‘a substantially constant unidirectional tension load throughout
the at least one torque transmission band’ which is not supported by the
original Specification.” (Final Action 7.)3
Appellant argues that paragraph 28 of the Specification (as twice-
amended by Appellant) supports the newly amended claim limitation.
Appellant argues that the twice-amended Specification
language “so that each torque load transmission by the first and
second torque transmission bands 350, 351 between the first
pulley 342 and the second pulley 344 imparts, under torque load,
a substantially constant unidirectional tension load throughout
the respective torque transmission band 350, 351 substantially
continuously throughout a whole span length of each of the
respective torque transmission band 350, 351 extending in whole
from the first pulley 342 to the second pulley 344” added to
paragraph [0028] naturally follows from and is inherent to the

3 We note that claim 1 was amended by Appellant’s AMENDMENT filed
April 2, 2018. The Final Rejection mailed July 6, 2018, states that
“Applicant’s amendment [of April 2, 2018] necessitated the new ground(s)
of rejection.” (Final Rejection, mailed July 6, 2018, at 13.) From this, it is
our understanding that Appellant’s amendment to claim 1 was entered. In
relevant part, claim 1, which was previously amended, was further amended
as follows: “a substantially constant unidirectional uniaxial tension load
throughout a respective one of the more than at least one independent
unidirectional torque transmission band.” Presumably treating it as a
harmless transcription error, Appellant does not argue the discrepancy
between the claim language quoted by the Examiner and the further
amended claim language. Because the rejection is based on the claim
requirement for a substantially constant unidirectional tension load
throughout a band, we agree that, in this case, the transcription error is
harmless.
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. . . language of paragraph [0028] as would be understood by
those skilled in the art.

(Appeal Br. 15.)
The Examiner, however, determined that Appellant’s first amendment
to paragraph 28 “introduces new matter into the disclosure,” i.e., the added
material “is not supported by the original disclosure.” (Final Action 6.) The
Examiner required cancellation of the new matter. (Id.) Appellant’s second
amendment to paragraph 28 did not resolve the problem. (See id.; see also
infra n.4.) Appellant asks us to determine whether the Examiner’s new
matter objection is proper. (Appeal Br. 9–13.)
Ordinarily, an objection is petitionable to the Director, and a rejection
is appealable to the Board. However, when the issue of new matter is the
subject of both an objection and a rejection, as is the case here in view of the
§ 112(a) rejection, the issue is appealable. See MPEP § 2163.06 II; see also
37 C.F.R. § 1.181.
As originally filed, paragraph 28 of the Specification recites:
The torque transmission bands 350, 351 may not form a
continuous circular belt around the pulleys 342, 344. Rather, one
end of the torque transmission band 350 may be at least partially
wrapped around (e.g. in a clockwise direction) and affixed to the
first pulley 342 while the other end of the torque transmission
band 350 may be at least partially wrapped round [sic] (e.g. in a
counter-clockwise direction) and affixed to the second
pulley 344. The ends of the torque transmission band 350 may
be affixed to a respective pulley 342, 344 in any suitable manner
such as with pins or any other suitable removable or non-
removable chemical or mechanical fastener. A second torque
transmission band 351, substantially similar to torque
transmission band 350 may be affixed at its ends to the pulleys
342, 342 [sic, 344] in a manner substantially similar to that
described above with respect to torque transmission band 350,
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however the direction in which the torque transmission band 351
is wrapped around the pulleys 342, 344 may be reversed (e.g. one
end of the torque transmission band 351 is wrapped in a counter-
clockwise direction around pulley 342 and the other end of the
torque transmission band 351 is wrapped around the pulley 344
in a clockwise direction). This dual torque transmission band
configuration places both torque transmission bands 350, 351 in
constant tension so that neither torque transmission band goes
slack.

(Spec. ¶ 28.)
Appellant’s first amendment adds to the final sentence of
paragraph 28 so that the final sentence reads:
This dual torque transmission band configuration places both
torque transmission bands 350, 351 in constant tension so that
neither torque transmission band goes slack and so that each
torque load transmission by the first and second torque
transmission bands 350, 351 between the first pulley 342 and the
second pulley 344 imparts, under torque load, a substantially
constant unidirectional tension load throughout the respective
torque transmission band 350, 351 substantially continuously
throughout a whole length of the respective torque transmission
band 350, 351 extending in whole at and from the first pulley 342
to and at the second pulley 344.

(Amendment After Final, July 24, 2017, at 2–3 (added language appears
with underline); see also Replacement Specification, October 29, 2018, ¶ 28
(incorporating Appellant’s first and second amendments to paragraph 28)
(hereinafter “Replacement Spec.”).)4

4 Appellant’s second amendment to paragraph 28 amended the language
added by the first amendment as follows:
This dual torque transmission band configuration places both
torque transmission bands 350, 351 in constant tension so that
neither torque transmission band goes slack and so that each
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Paragraph 28 of the Specification as originally filed discloses that the
“dual torque transmission band configuration places both torque
transmission band 350, 351 in constant tension so that neither torque
transmission band goes slack.” (Spec. ¶ 28 (emphasis added).) Appellant
argues that it naturally follows from this that “constant tension” means more
than just preventing either band from going slack, i.e., it means that under
torque load there is
a substantially constant unidirectional uniaxial tension load
throughout a respective one of the more than one independent
unidirectional torque transmission band substantially
continuously throughout a whole span length of the respective
one of the more than one independent unidirectional torque
transmission band extending in whole from the first pulley to the
second pulley.

(Appeal Br. 15; see also Replacement Spec. ¶ 28.) Appellant argues that
[r]eferring to Applicant’s specification (see Fig. 3A for example)
those skilled in the art know that the bands 350, 351 are
preloaded (tensioned against each other), where the preload on
the bands 350, 351 is greater than the forces generated on the
pulley system by arm motion (i.e., so that the tension in the bands
350, 351 does not increase or decrease and remains constant). In
this manner the pulley system is a rigid system as is known in the
art and provides accurate movements of the arm.

torque load transmission by the first and second torque
transmission bands 350, 351 between the first pulley 342 and the
second pulley 344 imparts, under torque load, a substantially
constant unidirectional tension load throughout the respective
torque transmission band 350, 351 substantially continuously
throughout a whole span length of each of the respective torque
transmission band 350, 351 extending in whole at and from the
first pulley 342 to and at the second pulley 344.
(See Amendment, April 2, 2018, at 2–3.)
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(Appeal Br. 13.) As evidence, Appellant points to U.S. Patent
No. 5,682,795, titled “ROBOTIC JOINT USING METAL BANDS”
(hereinafter “Solomon II”). (Reply Br. 3–4.)5 But the cited portion of
Solomon II simply says that a two drive band “configuration places both
drive bands in constant tension so that neither drive band ever goes slack.”
(Solomon II, col. 3, ll. 43–49.) We do not see how this furthers Appellant’s
argument given that paragraph 28 of the Specification as originally filed said
that the “dual torque transmission band configuration places both torque
transmission bands 350, 351 in constant tension so that neither torque
transmission band goes slack.” (Spec. ¶ 28.)
The test for sufficiency of a written description is “whether
the disclosure clearly ‘allow[s] persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.’ ”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351
(Fed.Cir.2010) (en banc) (quoting Vas–Cath Inc. v. Mahurkar,
935 F.2d 1555, 1562–63 (Fed.Cir.1991)). The disclosure must
“reasonably convey[ ] to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing
date.” Id. at 1351. Possession means “possession as shown in
the disclosure” and “requires an objective inquiry into the four

5 The Reply Brief is the first place in this appeal that Solomon II is presented
as evidence or argument is made referencing Solomon II. “A reply brief
shall not include . . . any new or non-admitted affidavit or other Evidence.”
See 37 C.F.R. § 41.41(b)(1). Appellant argues that Solomon II is
incorporated by reference in Solomon which is of record in this appeal.
(Reply Br. 3; see also Final Action 8.) Regardless, Appellant’s argument
relying on Solomon II was not raised in the Appeal Brief, is not responsive
to a new argument raised in the Answer, and Appellant has not shown good
cause for why we should consider this late argument. See 37 C.F.R.
§ 41.41(b)(2). However, for the sake of completeness, we address
Appellant’s Solomon II argument.

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corners of the specification from the perspective of a person of
ordinary skill in the art.” Id.

Crown Packaging Tech., Inc. v. Ball Metal Beverage Container Corp., 635
F.3d 1373, 1380 (Fed. Cir. 2011). “[T]he level of detail required to satisfy
the written description requirement varies depending on the nature and scope
of the claims and on the complexity and predictability of the relevant
technology.” Ariad Pharm., Inc., 598 F.3d at 1351. This inquiry is a
question of fact. Id.
The question we must address is whether the application-as-filed
clearly allows one of ordinary skill in the art to recognize that the inventor
had possession of the subject matter now being claimed. Here, Appellant
presents attorney argument, not persuasive evidence; and we are not
persuaded by this attorney argument (even if we consider the cited portions
of Solomon II) that one of ordinary skill in the art would clearly recognize
from the application as originally filed that the inventor had possession of
the additional subject matter now claimed, i.e.,
that each torque load transmission, between the first pulley and
the second pulley, by each of the more than one independent
unidirectional torque transmission band between the first pulley
and the second pulley imparts, under torque load, a substantially
constant unidirectional uniaxial tension load throughout a
respective one of the more than one independent unidirectional
torque transmission band.

(Claim 1 (emphasis added).)6 Therefore, we will affirm the Examiner’s
rejection of claim 1 under § 112(a). Claims 2–25 are not separately argued

6 We also do not find persuasive Appellant’s argument “that the
specification amendments made in Appellant’s response filed on
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with regard to the § 112(a) rejection and will fall with claim 1.
See 37 C.F.R. § 41.37(c)(iv).
It follows from the above discussion that we are also not persuaded
that Appellant’s first amendment to paragraph 28 is not new matter.
Therefore, we will also affirm the Examiner’s new matter objection.

The § 112(b) rejection
The Examiner determines that claim 1 is indefinite because it is not
clear

April 2, 2018 were deemed by the Examiner not to be new matter.” (Appeal
Br. 11.)
In a filing on July 24, 2017, Appellant sought to amend paragraph 28.
The amendment was entered and objected to. (See Office Action,
October 31, 2017, at 6–7; see also Answer 4–5, MPEP § 608.04.) In a
filing on April 2, 2018, Appellant sought to further amend paragraph 28. In
that amendment, Appellant presented paragraph 28 as amended by the
July 24, 2017 amendment, but did not note that the amendment had been
objected to. (See Amendment, April 2, 2018, at 2–3 (referring to
paragraph 28 of the Specification-as-filed as “paragraph [0030] of the
specification as published” (brackets in original)).) In the Final Action dated
July 6, 2018, the Examiner stated “that attempted amendments (to the
original Specification) filed 08/29/2016 and 04/02/2018 were determined not
to be new matter, but attempted amendments filed 07/24/2017 were
determined to be new matter.” (Final Action, July 6, 2018, at 2.) The
Examiner did not enter the proposed April 2, 2018 amendment. Instead,
“[g]iven the fluid nature of a repeatedly amended specification,” the
Examiner required the filing of a substitute specification. (Id.)
Therefore, when Appellant quotes from the April 2, 2018 proposed
amendment (see Appeal Br. 11), and argues that “it is noted that the
specification amendments made in Appellant’s responses filed on
April 2, 2018 were deemed by the Examiner not to be new matter” (id.), we
do not find the argument persuasive as it appears to suggest, incorrectly, that
the amendment of July 24, 2017, had been entered without objection.

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how a torque transmission band can transfer a tension load to a
pulley, resulting in a torque on the pulley, while having “a
substantially constant unidirectional tension load throughout the
at least one torque transmission band substantially continuously
throughout a whole length of the at least one torque transmission
band” as claimed.

(Final Action 7; see also supra n.3.) The Examiner explains that
since the torque transmission bands are driving a robotic arm to
different positions, the robotic arm’s operation will be dynamic,
such as starting, stopping, and changing direction. This dynamic
operation will require changes in speed, which is acceleration,
which necessitates changes i[n] force (or changes in tension)
applied to and through the torque transmission bands from the
driving pulley.

(Answer 6.)
Once again, Appellant directs us to Solomon II. (Reply Br. 3–4.)
Appellant argues that Solomon II demonstrates that, “[w]ith reference to the
operation of the metal bands,” the metal bands of Solomon II
operate to provide “perfect timing without backlash” (see Col. 2,
L. 40-42 of Solomon II) where the drive bands are wound around
the pulleys in opposite directions so that the opposing drive
bands are in constant tension, i.e., one band pulling against the
other band (in a “substantially constant unidirectional uniaxial
tension load throughout a respective one of the more than one
independent unidirectional torque transmission band
substantially continuously throughout a whole span length of the
respective one of the more than one independent unidirectional
torque transmission band extending in whole from the first pulley
to the second pulley”), so that neither drive band ever goes slack
(see Col. 3, L. 43-49 of Solomon II).

(Reply Br. 3–4.)
The Federal Circuit has stated that
when the USPTO has initially issued a well-grounded rejection
that identifies ways in which language in a claim is ambiguous,
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vague, incoherent, opaque, or otherwise unclear in describing
and defining the claimed invention, and thereafter the applicant
fails to provide a satisfactory response, the USPTO can properly
reject the claim as failing to meet the statutory requirements of
§ 112(b).

In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014).
“[W]e employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-issuance reviewing
courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Specifically, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Id.; see also In re Packard, 751 F.3d at 1311.
As an initial matter, we note that Appellant’s claim 1 is not limited to
metal bands. Claim 1 simply recites an “independent unidirectional torque
transmission band.” Appellant’s Specification discloses in the section titled
“Brief Description of Related Developments” that “robotic arms may use
metal bands to transmit torque.” (Spec. ¶ 3.) And, in the section titled
“DETAILED DESCRIPTION,” the Specification discloses that “[i]n one
aspect the torque transmission bands may be metallic bands.” (Id. ¶ 27.)
Applying a broadest reasonable interpretation, claim 1 is not limited to metal
bands; and we do not find arguments directed to only metal bands to be
persuasive.7

7 Although the Examiner refers to “Appellant’s metal bands” (Answer 5), for
the reasons discussed, we do not agree that the torque transmission bands
recited in claim 1 are limited to metal bands.
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The Examiner’s determination that “the robotic arm’s operation will
be dynamic, such as starting, stopping, and changing direction” and that
“[t]his dynamic operation will require changes in speed, which is
acceleration, which necessitates changes i[n] force (or changes in tension)”
(Answer 6), appears to be based on the Examiner’s understanding that the
tension on the band will vary depending on the particular arm action being
performed. It also appears that the Examiner interprets the claim language
“each torque load transmission . . . by each of the more than one independent
unidirectional torque transmission band . . . imparts, under torque load, a
substantially constant unidirectional uniaxial tension load” as including a
band that will be under a constant, i.e., a fixed value of, tension.
Bands that are “in constant tension so that neither torque transmission
band goes slack” (Spec. ¶ 28) may be constantly under tension, but they
need not be under a constant, i.e., a fixed value of, tension. Appellant’s
claim 1 recites “a substantially constant unidirectional uniaxial tension
load,” which suggests that the bands are under a fixed value of tension. But
Appellant appears to conflate tension to keep a band from going slack, i.e.,
tension that may vary, so long as the band does not go slack, with a constant
tension, that is a band having a fixed value of tension.
In view of the above, we agree with the Examiner that the claim
limitation “a substantially constant unidirectional uniaxial tension load
throughout a respective one of the more than one independent unidirectional
torque transmission band” is ambiguous.
We are not persuaded that the Examiner erred in rejecting claim 1
under § 112(b). Claims 2–25, which contain similar language and are not
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separately argued with regard to the § 112(b) rejection, will fall with
claim 1. See 37 C.F.R. § 41.37(c)(iv).

The § 103 rejection
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” Id. at 418
(brackets in original) (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
With regard to the scope and content of the prior art, the Examiner
finds that Solomon does not teach the claim 1 limitation “that each of the
more than one independent unidirectional torque transmission band includes
a segment of laterally increased cross section for the corresponding band
height.” (Final Action 12.) However, the Examiner finds that Sakata
teaches “a variable lateral thickness (Fig. 3) such that the torque
transmission band includes a segment of laterally increased cross section
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(Par. 0020 and Fig. 3.)” (Id. at 15.) Specifically, and as discussed in more
detail below, Sakata teaches attaching metal plates to portions of a torque
transmission timing belt. (The lateral thickness of the belt/metal plate
combination being greater than the thickness of the belt alone.) (See Sakata
¶¶ 14–15, Figs. 1–4.) The Examiner determines that
in view of Sakata’s teachings, it would have been obvious to one
of ordinary skill in the art at the time the invention was
effectively filed to have modified any one or all of Solomon’s
independent unidirectional torque transmission bands to include
rigid band segments between pulleys so that the torque
transmission band portions do not expand and contract,
suppressing rotation delay and restricting rectilinear deviation.

(Id. at 17.) The Examiner additionally determines that “one of ordinary skill
in the art would clearly understand that modifying Solomon’s transmission
bands with Sakata’s teaching of adding rigid members would have a
predictable result of reducing band length deformation when under tension.”
(Answer 13.)
Appellant argues that “Sakata expressly discloses a toothed belt (i.e.,
timing belt) that is made of rubber (i.e., an elastic material)” (Appeal
Br. 20), that “Sakata recognizes and eschews metal wires (which are
recognized in Sakata as being inelastic belts without stretch)” (id. (citing
Sakata ¶ 7)), that “[w]hat is disclosed/taught in Sakata is the use of the
inherently elastic timing belt with added rigidity to counter the inherent
elasticity of the timing belt by adding rigid members (i.e., metal plates) to
the rubber of the timing belt” (id. at 21), and that unlike Sakata, “Solomon
. . . teaches pinned metal bands, or laminated metal-visco-elastic bands (see
the metal drive tapes/bands 96 and 114) that are stiff and do not stretch”
(id.). Appellant further argues that
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the notion Sakata discloses that the invention of Sakata (i.e., the
toothed elastic timing belt with added rigidity) “can be applied
to an arm mechanism of any structure as long as it has a structure
that transmits power using a timing belt and pulley” as noted by
the Examiner on page 4 of the Final Office Action again requires
the use of a toothed elastic belt, which is clearly teaching away
from the metal bands of Solomon.

(Id. at 20.) Thus, Appellant argues,
it is clear that the drive bands of Solomon do not stretch or
elastically deform and already assure transmission of sufficient
power. Thus, one skilled in the art reading Solomon and Sakata
(and considering the actual teachings of the references) would
not modify the non-elastic bands of Solomon with the rigid
members of Sakata to reduce the elasticity as described in Sakata
because there is no elasticity in the metallic bands of Solomon
that needs mitigating.

(Id. at 25.)
The Examiner answers “that Col. 4, Ln. 35-46 of Solomon says
nothing about the metal bands not stretching. Regarding Sakata’s use of the
term ‘non-stretchable wires,’ this term may be used by Sakata in relative
comparison to the toothed belt.” (Answer 11.) With regard to Appellant’s
argument that Sakata uses a toothed elastic timing belt and pulley which
teaches away from Solomon’s metal bands, the Examiner answers that
“Appellant seems to wrongly conclude that all timing belts are toothed belts.
. . . [T]he term ‘timing’ in the nomenclature is simply an indication that the
belt provides a predictable outcome of the driven pulley based [on] a known
input to the driving pulley.” (Id. at 13.)
Solomon “generally relates to material handling robots, and
specifically relates to directly driving arm links and end effectors of a
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robot.” (Solomon, col. 1, ll. 24–26.) In particular, Solomon discloses a
robot arm having first and second elbow drive pulleys that
are substantially identical, i.e., the diameters are related by a 1:1
ratio. The drive tapes 96 comprise metal bands, or laminated
metal-visco-elastic bands, each having one end 98 wrapped
around one of the pulleys 92, 94 and retained in place by a
pin 100. A band tensioner 150 enables adjustment of tension in
the bands. The amount of band tension can be measured by
inserting a measuring tool through hole 152. The other end of
each band is pinned to the opposite pulley. The first end 98 of
each band wraps around about 320 degrees of the circumference
of a pulley 92, 94.

(Id. at col. 4, ll. 35–45.)
Sakata “relates to a substrate conveyer robot.” (Sakata ¶ 1.) Sakata
discloses a robotic arm including a first and second pulley where “[t]he
second pulley 12 is connected to the first pulley 11 via the timing belt 13.”
(Id. ¶ 3.) Under the heading “Problem(s) to Be Solved by the Invention,”
Sakata discloses:
Timing belts are generally comprised of materials with a
certain degree of flexibility as found in composite materials that
are primarily comprised of nitrile hydroxide rubber so that they
can be wrapped around a pulley to transmit motor drive force.
Thus, when the substrate is large and thereby requires larger arm
dimensions and weight, a large force will be applied to the timing
belt and cause the timing belt to stretch, which is a major problem
in terms of performing stable substrate conveyance.

(Id. ¶ 6.) Sakata also discloses:
Measures for avoiding these problems include methods
that use non-stretchable wires instead of the timing belt, and
methods that detect misalignment in the substrate from the
straight-line movement caused by stretching at the time [sic] belt
and then correct the motor rotation angle to avoid collision, etc.
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However, when using metal wires, there may be instances
where sliding occurs between the belt and the pulley, which can
lead to problems not being able to achieve stable straight-line
movement and result in poor reliability.

(Id. ¶¶ 7–8.) Figure 2 of Sakata is reproduced below.

Figure 2 is a schematic diagram that shows a transverse cross-section
structure of a robotic arm of the Sakata device. (Id. ¶ 14.)
As illustrated in Fig.2, a tooth surface has been formed on the
inner peripheral surface of the timing belt 23, and corresponding
tooth surfaces have also been formed on the outer peripheral
surfaces of the pulleys 21 and 22. These tooth grooves prevent
the pulleys and the timing belt from sliding, whereby it is
possible to more reliably transfer the rotational drive force of the
motors via the timing belt. Additionally, an idler pulley 8 has
been provided to the fourth pulley 22 which has a large
diameter 22. This allows an appropriate amount of tension to be
provided to the timing belt and reliable interlocking between the
timing belt tooth surface and the pulley tooth surfaces . . . .
The timing belt 23 rotates the pulley 21 and also moves
left-to-right to move the other pulley 22, and a rigid member 7 is
provided to the parts that contact with the pulley and the idler
pulley at the time of rotation. . . . [T]he rigid member is
comprised of a metal plate . . . 72 with a cross-section structure
that interlocks with the tooth surface on the timing belt and a flat
metal plate 71, and both of these components interpose the
timing belt 23, and the rigid members are reliably fixated on the
timing belt using fixating members such as bolts [] and nuts [],
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etc. By using this type of configuration, the part of the timing
belt where the metal plate is attached will no longer stretch and
the pulley rotational delays will also be suppressed.

(Id. ¶¶ 14–15.) The rigid member, i.e., the metal plates 71 and 72, when
attached to the belt effectively increases the lateral thickness of the belt.
(See id.; see also id. at Figs. 1–4.)
Sakata clearly teaches use of timing belts for torque transmission.
Sakata describes timing belts as “generally comprised of materials with a
certain degree of flexibility as found in composite materials that are
primarily comprised of nitrile hydroxide rubber.” (Sakata ¶ 6.) Sakata
recognizes the problem of stretch in such rubber timing belts (id.) and
addresses the problem by attaching metal plates to that portion of the belt
between pulleys (id. ¶¶ 14–15.) Sakata also clearly recognizes the
possibility of using metal wires for torque transmission. (Id. ¶ 7.) However,
the Examiner does not direct us to any teaching in Sakata regarding
attaching a rigid member to such metal wires. Indeed, Sakata describes
these wires as “non-stretchable,” although subject to sliding. (Id.)
When, as in this case, it is necessary “to look to interrelated teachings
of multiple patents,” we must “determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“‘[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’” Id. (quoting
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner does not direct us to anything in Sakata indicating that
Sakata recognizes a problem with stretching with respect to the use of metal
wires for torque transmission. Nor does the Examiner direct us to anything
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in Solomon indicating that Solomon recognizes a problem with stretching
with respect to the use of metal bands. Although the Examiner determines
that “adding rigid members would have a predictable result of reducing band
length deformation” (Answer 13), the Examiner does not indicate where the
prior art recognizes metal band length deformation as a problem to be
solved. We do not doubt that adding rigid members to metal bands would,
to some degree, reduce band length deformation. However, the Examiner
does not sufficiently explain why one would have been motivated to modify
Solomon as the Examiner suggests. See KSR Int’l Co., 550 U.S. at 418.
In view of the above, we are persuaded that the Examiner erred in
rejecting claim 1 under § 103. For the same reason, we are persuaded that
the Examiner erred in rejecting claims 2–25 under § 103.

CONCLUSION
The Examiner’s objection to the July 24, 2017 Amendment to the
Specification is affirmed.
The Examiner’s rejection of claims 1–25 under 35 U.S.C. § 112(a) is
affirmed.
The Examiner’s rejection of claims 1–25 under 35 U.S.C. § 112(b) is
affirmed.
The Examiner’s rejection of claims 1–25 under 35 U.S.C. § 103 is
reversed.
In summary, with regard to the rejections only:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–25 112(a) Written
Description
1–25
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–25 112(b) Indefiniteness 1–25
1–25 103 Solomon, Sakada 1–25
Overall
Outcome
1–25

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