Ex parte Tsurumoto et al.

Board of Patent Appeals and Interferences

Sep 22, 1999

08194748 (B.P.A.I. Sep. 22, 1999)

Application for patent filed February 10, 1994,1
entitled "Automatic Product Conveying System," which is a
division of Application 08/023,856, filed February 24, 1993,
now abandoned, which is a continuation of Application
07/776,227, filed November 13, 1991, now abandoned, which
claims the filing benefit of PCT Application PCT/JP91/00287,
filed March 4, 1991, and Japanese Application 02-62708, filed
March 15, 1990.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
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Paper No. 38
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte SHINSAKU TSURUMOTO,
HARUNOBU TATENO, MINEO GAMO,
SADAO KAKIZAWA, and KATSUJI KOBAYASHI

Appeal No. 1997-1379
Application 08/194,7481

ON BRIEF

Before HAIRSTON, BARRETT, and RUGGIERO, Administrative Patent
Judges.
Appeal No. 1997-1379
Application 08/194,748
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BARRETT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from
the final rejection of claims 10, 11, and 19-22.
We reverse.
BACKGROUND
The disclosed invention is directed to a flexible
manufacturing system that carries, loads, and unloads products
between autonomous workstations and an autonomous warehouse.
The system communicates the status associated with the
carrying, loading, and unloading of the products so that
collisions by the products as they move about the system are
avoided.
Claim 19 is reproduced below.
19. A communication system for communicating
between a movable unit and a fixed unit, said
communication system comprising:
a first signal transmitting and receiving system on
the movable unit, transmitting status request signals and
receiving status response signals;
means, on the movable unit, for controlling movement
of the movable unit responsive to the status response
signals;
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Application 08/194,748
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a status detector on the fixed unit, said status
detector detecting status of the fixed unit;
a second transmitting and receiving system on the
fixed unit, coupled to said status detector, receiving
the status request signals and transmitting the status
response signals responsive to the status request signals
and as indicated by the status of the fixed unit, wherein
the fixed unit comprising [sic] plural autonomous work
stations and an autonomous product warehouse, and the
movable unit comprising an autonomous carrier for
conveying products between the work stations;
an annular conveyance path formed along the work
stations with the carrier conveying products along the
annular conveyance path;
autonomous station conveyor means disposed between
the work stations and the conveyance path for conveying
products from the work stations to the carrier or from
the carrier to the work stations;
first control means for controlling the operation of
the station conveyor means; and
autonomous buffer means disposed between the product
warehouse and the conveyance path for the reception and
delivery of products between the warehouse and the
carrier,
wherein said first signal transmitting and receiving
system comprising [sic] first communication means for the
communication of loading and unloading status information
of products between the carrier and the station conveyor
means,
wherein said second signal transmitting and
receiving system comprising [sic] second communication
means for the communication of status information on the
loading and unloading of products between the carrier and
the buffer means,
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Application 08/194,748
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wherein said status detector comprising [sic] first
detector means for detecting the presence of product on
the station conveyor means,
wherein said system further comprising [sic] second
detector means for detecting the presence of product
unloaded onto the station conveyor means from the
carrier,
wherein said means for controlling comprising [sic]
collision avoidance means for avoiding collision of
products by preventing the unloading of products onto the
station conveyor means by the carrier responsive to
detection by said first detector means, and
wherein said first communication means comprises:
first and second light emitting elements
provided on the carrier and producing an unloading
request signal and a loading request signal,
respectively;
first and second light sensing elements provided
on the station conveyor means and receiving said
unloading request signal and loading request signal,
respectively;
a third light emitting element provided on the
station conveyor means and producing an unloading OK
signal in accordance with said unloading request signal
when there is no product on the station conveyor means;
a fourth light emitting element provided on the
station conveyor means and producing a loading OK signal
in accordance with said loading request signal when the
presence of product has been detected by the first
detector means and the presence of unloaded product not
detected by the second detector means; and
third and fourth light sensing elements provided
on the carrier and receiving said unloading OK signals
and loading OK signal, respectively.
Appeal No. 1997-1379
Application 08/194,748
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The Examiner relies on the following prior art:
Meyer et al. (Meyer) 3,796,327 March 12,
1974
Scourtes 4,144,960 March 20,
1979
Shiomi et al. (Shiomi) 4,538,950 September 3,
1985
Anders et al. (Anders) 4,827,395 May 2,
1989
Nakamura et al. (Nakamura) 5,006,996 April 9,
1991
(filed March 20,
1989)
Raj 5,008,661 April 16,
1991
(filed January 4,
1989)
Claims 10, 11, and 19-22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Raj, Nakamura, Anders,
Shiomi, Meyer, and Scourtes.
We refer to the Final Rejection (Paper No. 31) and the
Examiner's Answer (Paper No. 35) (pages referred to as "EA__")
for a statement of the Examiner's position and to the Appeal
Brief (Paper No. 34) (pages referred to as "Br__") and the
Reply Brief (Paper No. 36) for Appellants' arguments
thereagainst.
OPINION
Appeal No. 1997-1379
Application 08/194,748
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Grouping of claims
The Examiner errs in finding (EA2) that the separate
patentability of claims 20-22 has not been argued and,
therefore, that these claims stand or fall together with
claim 19. Appellants correctly note (RBr1) that the features
of claims 20-22 are addressed at pages 14-15 of the Brief.
Accordingly, the patentability of claims 20-22 must be
addressed individually. Since the statement of the rejection
in the Examiner's Answer is taken verbatim from the Final
Rejection, which should have addressed all of the claims, we
will not remand the case to the Examiner.
Obviousness
The Examiner bears the initial burden of establishing a
prima facie case of obviousness. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
A prima facie case of obviousness is made by presenting
evidence that the "reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art
having the references before him to make the proposed
substitution, combination or other modification." In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972);
Appeal No. 1997-1379
Application 08/194,748
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In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir.
1984). It is incumbent on the Examiner to state how and why
the teachings of the references would have been combined. "If
examination at the initial stage does not produce a prima
facie case of unpatentability, then without more the applicant
is entitled to grant of the patent." In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The Examiner has failed to establish a prima facie case
of unpatentability for at least three reasons: (1) the
rejection does not account for all the claim limitations; (2)
the Examiner fails to explain completely how the references
are combined to produce the claimed subject matter; and (3)
the Examiner fails to provide motivation for the proposed
combination.
(1)
All of the limitations in the claim must be addressed.
See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA
1970) ("every limitation positively recited in a claim must be
given effect in order to determine what subject matter that
claim defines"); In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970) ("All words in a claim must be
Appeal No. 1997-1379
Application 08/194,748
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considered in judging the patentability of that claim against
the prior art.").
Claim 19 is a very detailed claim and the Examiner makes
no effort to correlate the discussion of the references to the
claim limitations, e.g., by a claim chart or by quoting
relevant portions of the claim, or to account for all of the
claim limitations. While the correspondence of some
limitations to the references is clear without any specific
mention by the Examiner, e.g., the buffer means of claim 20
can only be met by Scourtes, many other limitations are not
accounted for in the combination. For example, the rejection
does not address the "first detector means" and "second
detector means" which cooperate with the "fourth light
emitting element," as claimed. Nor does the rejection address
where the references disclose or suggest the claimed "loading
request signal," "unloading request signal," "unloading OK
signal," and "loading OK signal." It is the Examiner's duty,
not ours in the first instance, to show that all of the claim
limitations have been addressed.
(2)
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Application 08/194,748
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The Examiner does not completely explain how the
references are proposed to be modified to produce the claimed
subject matter. The Examiner combines general teachings of a
communication system in Nakamura, Raj, and Anders with general
teachings of a manufacturing system in Shiomi and Meyer and a
workstation loading and unloading conveyor in Scourtes in some
vague way without specifically describing how the teachings
would be combined. This does not persuade us that one of
ordinary skill in the art having the references before her or
him, and using her or his own knowledge of the art, would have
been put in possession of the claimed subject matter.
For example, the Examiner concludes (EA5): "It would
have been obvious to provide Shiomi with the teachings of the
communication system above [of Nakamura as modified by Raj and
Anders]. Note that the communication systems and detecting
means of similar design are provided at each station as taught
by Shiomi and Meyer." This does not explain how Shiomi would
be modified to provide the communication system of Nakamura,
Raj, and Anders in place of that taught in Shiomi. This also
does not explain how the teachings of Meyer are used in the
combination; Meyer seems to be tacked on as an afterthought.
Appeal No. 1997-1379
Application 08/194,748
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(3)
The Examiner generally does not provide any facts to show
motivation, but merely concludes that various modifications
would have been obvious. As recently stated by the Federal
Circuit: "[T]he best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is
rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references. . . .
Combining prior art references without evidence of such a
suggestion, teaching, or motivation simply takes the
inventor's disclosure as a blueprint for piecing together the
prior art to defeat patentability--the essence of hindsight."
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
For example, the Examiner concludes that it would have
been obvious "to have utilized a status device in the
container (fixed device) of a system like Nakamura to send the
status of the container in response to interrogation from a
mobile interrogator in order to help the interrogator make
informed decisions as suggested by Raj" (EA4). It is not
clear exactly what claim limitation the Examiner is trying to
Appeal No. 1997-1379
Application 08/194,748
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address unless it is the limitations of the "status request
signals" and "status response signals" in the first and second
transmitting and receiving systems. The Examiner does not
explain why one of ordinary skill in the art would have been
motivated to modify Nakamura to provide a status
request/response since Nakamura is an inventory control system
in an automatic warehouse which does not require such status
signals.
The Examiner also concludes (EA5): "It would have been
obvious to provide Shiomi with the teachings of the
communication system above [of Nakamura as modified by Raj and
Anders]." It is not explained why one of ordinary skill in
the art would have been motivated to use the communication
system of Nakamura, Raj, and Anders (assuming such combination
would have been obvious) in place of the system in Shiomi.
What advantage of the system in Nakamura as modified or
disadvantage of the system of Shiomi would have led one
skilled in the art to make a change?
We do not say that the Examiner's rejection is completely
without basis. For example, Anders discloses that
transmitting and receiving devices may communicate with
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Application 08/194,748
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electromagnetic radiation, radio waves, and
non-electromagnetic radiation, such as light and sound waves.
This provides motivation for substituting a light
communication system for an electromagnetic communication
system. However, in general, the rejection fails to set forth
factual support for motivation.
The Examiner states that the motivation may be based on
knowledge generally available to those skilled in the art
(EA7). This is true. However, the knowledge of those of
ordinary skill in the art is normally demonstrated by a
reference. See In re Kaplan, 789 F.2d 1574, 1580,
229 USPQ 678, 683 (Fed. Cir. 1986) ("Even if obviousness of
the variation is predicated on the level of skill in the art,
prior art evidence is needed to show what that level of skill
was."). At a minimum, the Examiner is required to explain
(i.e., make appropriate factual findings) as to what one
skilled in the art would have known that would have provided
the motivation. See In re Rouffet, 149 F.3d 1350, 1358,
47 USPQ2d 1453, 1459 (Fed. Cir. 1998) ("[E]ven when the level
of skill in the art is high, the Board must identify
specifically the principle, known to one of ordinary skill,
Appeal No. 1997-1379
Application 08/194,748
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that suggests the claimed combination."). Here, the Examiner
has not identified what knowledge one of ordinary skill in the
art would have had that would have motivated him or her to
combine the references in the manner suggested by the
rejection. Absent such evidence, we infer that the Examiner
selected these references with the assistance of hindsight.
The Examiner further states that "an examiner's
obviousness rejection which relies on a combination of
references individually showing the various elements of a
claimed invention without any express or implicit suggestion
to do so is sufficient if it includes a convincing line of
reasoning as to why an artisan would have found it obvious to
choose the elements from the references to arrive at the
claimed invention" (EA7-8). While a convincing line of
reasoning is always necessary for an obviousness rejection,
merely inventing a plausible explanation why a modification or
combination would have been made is not sufficient.
Obviousness is determined by an objective standard and must be
based on evidence in the record, either in the prior art or in
findings by the examiner, so that it can be reviewed. See
Dembiczak, 175 F.3d at 999, 50 USPQ2d at 1617.
Appeal No. 1997-1379
Application 08/194,748
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Appeal No. 1997-1379
Application 08/194,748
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CONCLUSION
For the reasons discussed above, the rejection of
claim 19 and dependent claims 10, 11, and 20-22 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
Appeal No. 1997-1379
Application 08/194,748
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J. Randall Beckers
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