FANUC CORPORATION

Patent Trials and Appeals Board

May 14, 2020

2019006237 (P.T.A.B. May. 14, 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.
15/077,910 03/23/2016 Ryuji TAKIKAWA 4639-495 7377
22429 7590 05/14/2020
HAUPTMAN HAM, LLP
2318 Mill Road
Suite 1400
Alexandria, VA 22314
EXAMINER
RUSHING, JR, BOBBY
ART UNIT PAPER NUMBER
3658
NOTIFICATION DATE DELIVERY MODE
05/14/2020 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):
docketing@ipfirm.com
pair_lhhb@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RYUJI TAKIKAWA, and
SATOSHI KINOSHITA
__________________

Appeal 2019-006237
Application 15/077,910
Technology Center 3600
____________________

Before EDWARD A. BROWN, JAMES P. CALVE, and
MICHAEL L. WOODS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 4–10, which are all the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Fanuc Corporation as the real party in interest. Appeal Br. 2.
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Application 15/077,910

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CLAIMED SUBJECT MATTER
Claims 4 and 5 are independent. Claim 4 is reproduced below.
4. A joint structure for an arm of a robot, comprising:
a first member;
a speed reducer coupled to one surface of a wall portion
of the first member, a shaft of the speed reducer being passed
through the wall portion;
a motor located at a side opposite to the one surface of
the wall portion;
a first gear attached to a shaft of the motor;
a second gear coaxially attached to the shaft of the speed
reducer and intermeshing with the first gear; and
a second member attached to the speed reducer,
wherein
the second gear has a larger diameter than a diameter of a
coupling unit of the speed reducer which couples to the first
member,
the first member is provided with a gear accommodating
portion that accommodates the first gear and the second gear
which intermesh with each other,
the gear accommodating portion is formed by a cover
member covering the first gear and the second gear which
intermesh with each other, and
the cover member is disposed in a space of the arm of the
robot, is removably fixed to the first member by a detachable
fastener, and is located at a side opposite to the one surface of
the wall portion, and the motor is held at the cover member.

Appeal Br. 20 (Claims App.).

REJECTION
Claims 4–10 are rejected under 35 U.S.C. § 103 as unpatentable over
Appellant’s Admitted Prior Art (Appellant’s Figure 5 and description thereof
taken from Nakako, JP H08-155881 A, pub. June 18, 1996) and Long (US
2013/0047769 A1, pub. Feb. 23, 2013).
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Application 15/077,910

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ANALYSIS
Independent Claims 4 and 5
The Examiner finds that Nakako, as depicted in Figure 5 (Prior Art) of
Appellant’s Specification, teaches a robot arm joint structure with a cover
member permanently fixed to the first member, rather than removably fixed
to the first member by a detachable fastener, as recited in independent claims
4 and 5. Final Act. 2–3, 5–6. The Examiner determines it would have been
obvious to add fasteners to Nakako’s robot arm to fasten the cover member
removably to the first member to better allow for maintenance access to the
gears because the gears are difficult or impossible to access. Id. at 3 (citing
MPEP ¶ 2144.04(V)(C) and In re Dulberg, 289 F.2d 522, 523 (CCPA 1961)
that “if it were considered desirable for any reason to obtain access to the end
of [the prior art’s] holder to which the cap is applied, it would be obvious to
make the cap removable for that purpose”), 6 (same for claim 5).
The Examiner finds that Long teaches a robot arm joint structure with
a cover 3113 removably fixed to a first member 313 by detachable fasteners
and determines that it would have been obvious to add fasteners to Nakako to
removably fasten the cover to access the gears for maintenance. Id. at 3–4, 7.
Appellant argues that the Examiner’s motivation to modify Nakako’s
cover member to be removable––to access the gears for better maintenance––
relies on a problem gleaned from Appellant’s Specification, not Nakako or
the applied prior art. Appeal Br. 8–9. Appellant asserts that this problem
with Nakako’s structure is “Applicant’s own observation” and a skilled
artisan would not have known that a problem existed in Nakako’s structure or
looked for a solution in the art without the benefit of Appellant’s observation
in the Specification. Id. at 10 & n.2 (citing Spec. 4:30–5:23).
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Appellant also argues that Dulberg holds it is obvious to make a cap
separable if it is desirable for any reason to access the end of the prior art
holder, but Nakako already provides access to gears 5, 7 through a detachable
connection between body 1b and plate 10. Appeal Br. 10–11. As a result,
Appellant argues, “In re Dulberg does not support the Examiner’s assertion
to make an additional removable connection (‘ARC’) between the body 1b
and the “cover” of the gears 5 and 7 in Nakako.” Id. at 11.
We reproduce Appellant’s Figure 5 to illustrate Nakako’s structure and
Appellant’s Figure 1 to illustrate the claimed joint structure below.

Figure 5 illustrates Nakako’s robot arm with first member 1 (red) and
integral cover (red) for gears 5, 7 removably connected to coupling plate 10
(blue) and speed reducer 2 by bolts 6. Spec. 4:1–8. Gears 5, 7 are accessed
for maintenance by removing speed reducer 2 and second member 3. Id. at
5:18–23. Figure 1 illustrates the claimed joint structure with gear cover 14
(red) connected to first member 1 (blue) by bolts 17. Spec. 8:1–9:16.
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In re Dulberg held it would be obvious to make a press fit cap of the
Peterson patent manually removable “[i]f it were considered desirable for any
reason to obtain access to the end of Peterson’s holder to which the cap is
applied.” Dulberg, 289 F.2d at 523. “No specific prior art teaching would be
necessary to show that operation,” but the court held that the prior art Noble
patent taught a removable cap in a similar structure to that of Peterson. Id.
The Examiner reasons it would have been obvious to “add fasteners to
the robot arm of Nakako to removably fasten the cover member to the first
part thereby better allowing for maintenance access to the gears.” Final Act.
4, 7; Ans. 9–10. The Examiner cites Long to teach the knowledge/skill in the
art to removably fix a cover member (first box 3111) to a first member (first
cover 313) of a robot arm structure with fasteners. Final Act. 4, 7; Ans. 9.
As a general rule, the articulation of a reason to combine teachings that
is supported by rational underpinnings prevents hindsight bias from arising.
See In re Cree, 818 F.3d 694, 702 & n.3 (Fed. Cir. 2016) (holding a showing
of sufficient evidence that a person of ordinary skill in the art would have had
a reason to combine the references as a predictable use of prior art elements
according to their established functions fully addressed the argument that the
rejection was based on “impermissible hindsight.”); see also Medichem, S.A.
v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (“[T]he motivation to
combine references, serves to prevent hindsight bias.”); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (holding that “it can be important to
identify a reason that would have prompted a skilled artisan to combine the
elements in the way the claimed invention does because a patent composed of
several elements is not proved obvious merely by demonstrating that each of
its elements was, independently, known in the art).
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Application 15/077,910

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However, an important caveat to this general rule is that the reason for
combining references cannot be gleaned solely from Appellant’s disclosure.
It must be based only on knowledge that was within the level of ordinary skill
in the art at the time the claimed invention was made. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971); see Ans. 9 (citing id.).
As our reviewing court has held in a similar context:
The Board’s suggestion that it was obvious to perform the
method that neither Zachariades nor Kitamaru performed nor
suggested, is supported solely by the teaching in Hyon’s patent.
See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“It is
impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior
art so that the claimed invention is obvious.”) (quoting In re
Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)); see also
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed.
Cir. 1985) (“The invention must be viewed not with the
blueprint drawn by the inventor, but in the state of the art that
existed at the time.”).

In re Hyon, 679 F.3d 1363, 1370–71 (Fed. Cir. 2012).
The Examiner does not cite any prior art that removably fixes a cover
to a first member in a space of a robot arm by detachable fasteners to “better
allow[ ] for maintenance access to the gears.” Final Act. 4, 7; Ans. 9 (“for
the purpose of improving access to gears for maintenance”). That teaching
appears only in the Specification and its description of Nakako (Figure 5).
[T]here is also a problem in which the second gear 7 may not be
easily exchanged since it is preferable to remove from the first
member 1 the relatively heavy speed reducer and the second
member 3 attached to the speed reducer [2] when the second
gear 7 is exchanged for maintenance.

Spec. 5:18–23.
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Appellant describes the claimed improvement (Figure 1) as:
In addition, when the second gear 7 is exchanged for
maintenance, there is no need to remove from the first member
1 the relatively heavy speed reducer 2 and the second member 3
attached to the speed reducer 2. It is possible to exchange the
second gear 7 by removing the gear accommodating portion 14
formed of the relatively light cover member. In other words,
the gear of the input unit of the speed reducer can be exchanged
without removing the base and the arm which constitute the
link of the robot, the speed reducer, and so forth; thus, the
maintainability can be improved.

Spec. 11:32–12:9. The Examiner’s reason for making Nakako’s gear cover
removable––“to better allow for maintenance access of the gears”––appears
only in Appellant’s Specification and its description of the problem solved
by the claimed arm joint structure and its removable cover.
The Examiner is correct that the prior art teaches a robot arm structure
with a cover element removably connected to another element with gears in
between. Long fixes first cover 313 to first box 3111 with fasteners to form
receiving groove 3115 that receives first transmission mechanism 36 that
comprises first, second, third, and fourth gears 361–64. See Long ¶¶ 14, 16,
Figs. 1, 2. Long does not describe the fasteners or nature of the detachable
arrangement that they may provide. Fasteners are illustrated in Figure 2, but
they are not described in Long’s written description for removal of first
cover 313 from first box 3111 for maintenance or for any other purpose.
Furthermore, Nakako teaches that it is known to removably fix first
element 1 to coupling plate 10 and speed reducer 2 using detachable bolts 6.
Spec. 5:18–23. Indeed, Nakako teaches this detachable arrangement is used
to access second gear 7 for maintenance. Id. However, Nakako does not
teach a cover that is detachable from a first member for this purpose.
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Application 15/077,910

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The only teaching of a cover member separable from a first member
in a robot arm by detachable fasteners to access gears for maintenance is in
Appellant’s Specification. See id. at 11:32–12:9. This arrangement solves a
problem identified by Appellant that a first element and integral cover that is
detachably fixed to a speed reducer 2 by bolts 6 makes gears 5, 7 difficult to
access for maintenance. Appellant’s identification of this problem and its
solution weighs in favor of non-obviousness particularly when the Examiner
has not offered an independent reason to modify Nakako that is unrelated to
Appellant’s identified problem and solution described in the Specification.
Our reviewing court recently described this issue as follows:
Eibel Process and Sponnoble both stand for the proposition that
the discovery of an unknown problem can result in a patentable
invention, even if the solution would have been obvious once
the problem is identified. Eibel Process, 261 U.S. at 67–68, 43
S. Ct. 322; Sponnoble, 405 F.2d at 585. They did not address
whether the Board must consider the discovery of an unknown
problem when there exists an independent motivation to
combine prior art references. Instead, those cases found that the
inventor’s discovery of and solution to an unknown problem
weighed in favor of nonobviousness because the proffered
reason to modify the prior art did not present a specific,
alternate basis that was unrelated to the rationale behind the
inventor’s reasons for making the invention. Here, the
examiner and the Board determined that a person of ordinary
skill in the art would combine the ’009 publication with
Raviendran for a reason independent from solving the problem
identified by Conrad—to improve structural integrity by
removing the folding seam.

See In re Conrad, 759 F. App’x 982, 985–86 (Fed. Cir. 2019). Here, the
Examiner has not provided an independent rationale to modify Nakako.
Instead, the Examiner relies on the problem and solution of Appellant.
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Application 15/077,910

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The issue is not whether it would have been obvious to form a robot
arm structure with housing elements detachably connected together by bolts.
Both Nakako and Long teach this. Nakako teaches to do so for maintenance
and Long illustrates this arrangement without further explanation. Nakako’s
bolts 6 also are accessible from inside the robot arm as claimed.
The issue for us to decide is whether a skilled artisan would have been
motivated to modify Nakako’s arrangement, which already is detachable by
bolts 6 to access gears 5, 7 for maintenance, to make the cover portion of
Nakako’s first element removable with additional bolts to access the same
gears that already can be accessed by Nakako’s Figure 5 arrangement. The
Examiner’s reason for doing so––to access the gears––is met by Nakako.
To the extent the Examiner determines that this addition will improve
access, that reason appears to be based solely on Appellant’s description of
the problem and solution in the Specification. As Appellant argues, “[t]he
primary distinction between Nakako and the instant application is where to
make a removable connection.” Appeal Br. 14. The Examiner’s reason for
adding a removable cover member and additional fasteners between a cover
and first element on an arm space of the robot is based on Appellant’s own
description of the problem and solution, which is impermissible hindsight.
Even if the Examiner’s reasoning is not taken solely from Appellant’s
description of the problem and solution, Dulberg does not teach or suggest
where to make the cover member detachable on Nakako, much less how to
make an additional detachable cover. Dulberg is distinguishable because it
involved a separate cap that was press fit onto a lipstick tube. The Examiner
wanted to make this press fit cap detachable to remove lipstick from within
the tube. Dulberg, 289 F.2d at 523–24.
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Here, Nakako’s first member 1 includes a cover element as an integral
part of the first member. Spec. 5:18–23. The Examiner’s proposal to make
the integral cover detachable is perhaps better characterized as making this
integral cover portion of first member 1 separable from first member 1 rather
than integral therewith. The Examiner proposes to make Nakako’s integral
cover member separate from first member 1 but then attach it back to first
member 1 with additional bolts 17 (in addition to bolts 6 that are needed to
detachably hold first member 1 to coupling plate 10 and speed reducer 2) in
order to allow access to gears 5, 7, which already are accessible in Nakako’s
existing arrangement. Essentially, the Examiner has used the Specification
as a blueprint to modify Nakako to arrive at the claimed structure.
Furthermore, Nakako’s detachable arrangement is very similar to that
of Long. Long’s first box 3113 is analogous to Nakako’s first member 1 and
its integral cover. Long’s first cover 313 is analogous to Nakako’s coupling
plate 10. Long does not teach a separate cover removably fastened to a first
member that, in turn, is removably coupled to a speed reducer as claimed.
That teaching appears only in Appellant’s Specification.
Thus, we do not sustain the rejection of independent claims 4 and 5 or
their respective dependent claims 6–10.
CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
4–10 103 AAPA, Nakako,
Long
4–10

REVERSED