Fanuc America Corporation

Patent Trials and Appeals Board

Aug 3, 2020

14283749 - (D) (P.T.A.B. Aug. 3, 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.
14/283,749 05/21/2014 Yi Sun 18030-1 5452
43935 7590 08/03/2020
Shumaker, Loop & Kendrick, LLP
1000 Jackson Street
Toledo, OH 43604-5573
EXAMINER
FOLEY, SHON G
ART UNIT PAPER NUMBER
3668
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
cgolupski@shumaker.com
dmiller@shumaker.com
tlopez@shumaker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YI SUN, JASON TSAI, LAXMI MUSUNUR,
and MICHAEL SHARPE
____________

Appeal 2019-001419
Application 14/283,749
Technology Center 2100
____________

Before JAMES R. HUGHES, JOHN A. EVANS, and
STEPHEN E. BELISLE, Administrative Patent Judges.

BELISLE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1 and 3–19. Appeal Br. 3. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Throughout this Decision, we use the word “Appellant” to refer to
“applicant” as defined in 37 C.F.R. § 1.42 (2017). Appellant identifies the
real party in interest as FANUC America Corporation. Appeal Br. 3.
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Application 14/283,749

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STATEMENT OF THE CASE
The Claimed Invention
Appellant’s invention relates generally to “robotic systems, and more
particularly, to systems and methods for robotic cutting tool operations.”
Spec. ¶ 1. According to the Specification, Appellant’s invention
“enhanc[es] a visualization of a learning path for a robotic cutting tool.”
Spec. ¶ 8.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A method for controlling a robot by an operator,
comprising:
running a user program to cause the robot to move along a first
continuous programmed path to generate a first trace
representative of an actual tool center point position;
computing a path deviation between the first continuous
programmed path and the first trace;
adjusting the user program by the amount of computed path
deviation to create a compensated user program;
storing the first trace representative of an actual tool center point
position in a memory device;
running the compensated user program to cause the robot to
move along a second continuous programmed path to
generate a second trace representative of an actual tool
center point position; and
displaying the first trace and the second trace;
wherein the operator selects a desired continuous path from one
of the first trace and the second trace.
Appeal Br. 26 (Claims App.).
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The Applied References
The Examiner relies on the following references as evidence of
unpatentability of the claims on appeal:
Casler, Jr. US 4,772,831 Sept. 20, 1988
Jeon US 5,521,829 May 28, 1996
Gunnarsson US 7,130,718 B2 Oct. 31, 2006
Sandberg US 2010/0241289 A1 Sept. 23, 2010
The Examiner’s Rejections
The Examiner made the following rejections of the claims on appeal:
Claims 1, 3, 5–8, and 14–16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Gunnarsson and Sandberg.
Final Act. 3–9.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Gunnarsson, Sandberg, and Casler. Final Act. 10–
12.
Claims 9–13 and 17–19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Gunnarsson, Jeon, and Sandberg.
Final Act. 12–18.
ANALYSIS2
Appellant disputes the Examiner’s findings that the various
combinations of Gunnarsson, Sandberg, Jeon, and Casler render obvious
claims 1 and 3–19. Appeal Br. 8–24; Reply Br. 1–5.

2 Throughout this Decision, we have considered Appellant’s Appeal Brief
filed July 30, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed
December 5, 2018 (“Reply Br.”); the Examiner’s Answer mailed
October 11, 2018 (“Ans.”); the Final Office Action mailed October 5, 2017
(“Final Act.”); and Appellant’s Specification filed May 21, 2014 (“Spec.”).
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Appellant argues, inter alia, that independent claims 1 and 9 involve
(i) displaying multiple traces representative of an actual robot tool center
point position, and (ii) an operator selecting a desired continuous
programmed path for the robot based on one of the multiple traces, and that
there is no basis in the record, but for impermissible hindsight, for
modifying Gunnarsson or other cited art to satisfy these claim limitations.
See Appeal Br. 8–24; Reply Br. 1–5. In particular, Appellant argues “[t]here
is no consideration whatsoever of using subjective operator input in
selecting a trace, including appearance, as a selection criteria, as doing so
would be antithetical to the goals of Gunnarsson—providing absolute
accuracy.” Appeal Br. 10. Appellant argues “[t]he displayed paths of
Sandberg share nothing in common with the path and conditions used in
Gunnarsson, other than the word ‘path,’ and bear no relation to obtaining
absolute accuracy, as per Gunnarsson.” Id. at 11. Appellant also argues
“[t]he rejections appear predicated on finding various elements of
Appellant’s claims in the cited documents without properly considering their
original context or identifying some desirable aspect in making the
combination; e.g., some teaching, suggestion, or motivation to do so.” Id.
at 13 (citing case law regarding impermissible hindsight). “Appellant
submits that impermissible hindsight is needed to find the Sandberg
reference which teaches user selection of a path[, and not user selection of a
trace].” Reply Br. 2; see id. at 4 (“Appellant submits that what Sandberg
displays and selects from are not traces (actual robot paths) as in Appellant’s
claim, but rather are the programmed (design) continuous path of
Appellant’s claim.”). On the present record, we find Appellant’s argument
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persuasive as discussed below. We turn first to the teachings of Gunnarsson
and Sandberg.
Gunnarsson discloses “a method for obtaining high-precision control
of an industrial robot,” which “comprises an iterative process, by means of
which the absolute accuracy of the robot is tuned by automatic means.”
Gunnarsson, 1:6–19. Gunnarsson also discloses a programmed reference
path of a robot (akin to the claimed continuous programmed path) and
measuring the position of the robot’s tool operating point upon executing the
programmed path (akin to the claimed trace). Gunnarsson, 10:16–27.
Gunnarsson further discloses that calculated path deviation is used by an
adjusting module to adjust the reference path such that path deviation is
minimized, and that “[t]o reduce the path deviation to the level of repetition
accuracy, this adjustment often needs to be made iteratively, which implies
that the path in question is run more than once and that the reference path is
adjusted between each run.” Gunnarsson, 10:27–34.
Contrary to Appellant’s argument that “Gunnarsson does not teach
two actual traces” (Reply Br. 3; see Appeal Br. 15–16), we find that
Gunnarsson’s disclosure of iteratively running the reference path, measuring
the resulting tool operating point position, and adjusting the reference path
does teach multiple programmed paths and multiple traces resulting
therefrom. But, importantly, Gunnarsson does so in the context of an
automated system for adjusting the reference path without user intervention.
See Gunnarsson, 1:6–19 (“[T]he absolute accuracy of the robot is tuned by
automatic means.”), 3:60–62 (“The accuracy shall be capable of being tuned
automatically.” (emphasis added)). Also, as argued by Appellant and found
by the Examiner, Gunnarsson does not disclose displaying multiple traces
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representative of actual robot tool operating point positions and an operator
selecting a desired reference path for the robot based on viewing one of the
multiple traces, as variously recited in independent claims 1 and 9. See
Appeal Br. 10–16; Reply Br. 2–5; Final Act. 4–5; Ans. 4.
Sandberg discloses a “method and system for interactive robotic path
planning, path selection, and path visualization.” Sandberg ¶ 2. Sandberg
also discloses that a mobile robot “automatically displays suggested paths to
the user when likely paths are detected, simplifying the process of
navigating the device through a space” (Sandberg ¶ 12 (emphasis added)),
and that such “paths may be displayed as images superimposed on the
camera’s view” so that “a user can select a likely path merely by clicking on
the suggested path” (Sandberg ¶ 58 (emphases added)). But, as argued by
Appellant, Sandberg displays and permits user selection of “suggested
paths” (akin to the claimed continuous programmed path), not traces of
actual robot positions resulting from execution of the programmed path. See
Appeal Br. 11 (“The displayed paths of Sandberg share nothing in common
with the path and conditions used in Gunnarsson, other than the word ‘path,’
and bear no relation to obtaining absolute accuracy.”); Reply Br. 4 (“[W]hat
Sandberg displays and selects from are not traces (actual robot paths) as in
Appellant’s claim, but rather are the programmed (design) continuous path
of Appellant’s claim.”).
Although neither Gunnarsson nor Sandberg teaches displaying
multiple traces representative of actual robot tool operating point positions
and an operator selecting a desired reference path for the robot based on
viewing one of the multiple traces, the Examiner nevertheless finds that the
skilled artisan would have been motivated to “modif[y] the automated path
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correction of Gunnarsson to include the display for user interaction of
Sandberg . . . to allow the operator to visualize and correct for improper
automated path generation.” Final Act. 5; see Ans. 3–4. We find that the
Examiner has not provided sufficient evidence or technical reasoning to
explain clearly why the skilled artisan, absent hindsight, would have
(1) recognized Sandberg’s display and manual selection of possible paths of
a mobile robot to be applicable to Gunnarsson’s automated system for tuning
the accuracy of robot movements (i.e., automatically minimizing deviation
between a reference path (akin to Sandberg’s possible paths) and the
position of the robot’s tool operating point upon executing the programmed
reference path); and then (2) leaped from Sandberg’s teaching of viewing
and selecting a possible (reference) path to modifying Gunnarsson, not to
introduce the same feature, but instead to introduce viewing and selecting of
traces resulting from execution of such reference paths. See Sensonics, Inc.
v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on
hindsight knowledge of the patented invention, when the prior art does not
contain or suggest that knowledge, is to use the invention as a template for
its own reconstruction—an illogical and inappropriate process by which to
determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc.,
721 F.2d 1540, 1553 (Fed. Cir. 1983))). The Examiner also has not
persuasively shown how the other cited art remedies this deficiency.
Because we find this issue dispositive here, we do not address Appellant’s
other arguments.
Accordingly, constrained by the present record, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103 of independent claims 1 and 9.
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Application 14/283,749

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Additionally, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103 of claims 3–8 and 10–19, which depend therefrom.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. §
Reference(s)/
Basis Affirmed Reversed
1, 3, 5–8,
14–16
103 Gunnarsson,
Sandberg
1, 3, 5–8,
14–16
4 103 Gunnarsson,
Sandberg, Casler
4
9–13, 17–19 103 Gunnarsson, Jeon,
Sandberg
9–13, 17–19
Overall
Outcome
1, 3–19

REVERSED