2020005395 (P.T.A.B. Feb. 26, 2021)

FANUC Corporation

Patent Trials and Appeals BoardFeb 26, 2021

2020005395 (P.T.A.B. Feb. 26, 2021)

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. 15/355,183 11/18/2016 Kouji MAEDA 4952-490 1530 22429 7590 02/26/2021 HAUPTMAN HAM, LLP 2318 Mill Road Suite 1400 Alexandria, VA 22314 EXAMINER GORDON, MATTHEW E ART UNIT PAPER NUMBER 2892 NOTIFICATION DATE DELIVERY MODE 02/26/2021 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 KOUJI MAEDA ____________________ Appeal 2020-005395 Application 15/355,183 Technology Center 2800 ____________________ Before ERIC S. FRAHM, JOHNNY A. KUMAR, and SCOTT B. HOWARD, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8–13, which constitute all the claims pending in this application. Claims 1–7 have been canceled (see Amendment filed Nov. 14, 2019 (p. 2)). We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as FANUC Corporation (Appeal Br. 2). Appeal 2020-005395 Application 15/355,183 2 We reverse. STATEMENT OF THE CASE Disclosed Invention and Exemplary Claim Appellant’s disclosed invention, entitled “Recommended Maintenance Notification System” (Title), relates particularly “to a system that recommends the execution of the maintenance of a machine tool” (Spec. 1:6–7; see Fig. 1). Appellant’s recommended maintenance notification system 100 (see Fig. 1) is composed of plural machine tools 1–N, a measurement device 130, and a server 110 having three parts: (1) a machining accuracy defect countermeasure database 113, (2) a machine status database 115, and (3) a notification unit 117. Claims 8 and 11 are independent claims, each reciting a recommended maintenance notification system. Exemplary independent claim 8 under appeal, with emphases and bracketed lettering added to key portions of the claim at issue, reads as follows: 8. A recommended maintenance notification system, comprising: [A1] a first machine tool and [A2] a second machine tool each configured to machine workpieces according to a machining program; [B] a measurement device configured to measure a measurement dimension of the workpieces machined by the first machine tool at a measurement point; and [C] a server, wherein the first machine tool is configured to transmit to the server a first machine status information representing a monitored spot and a status of the monitored spot of the first machine tool, Appeal 2020-005395 Application 15/355,183 3 the second machine tool is configured to transmit to the server a second machine status information representing a monitored spot and a status of the monitored spot of the second machine tool, the measurement device is configured to transmit to the server workpiece information representing the measurement point and the measurement dimension at the measurement point of a workpiece that has been defectively machined by the first machine tool, the server includes: [C1] a machining accuracy defect countermeasure database configured to store accumulated data including the measurement point and the measurement dimension at the measurement point of a plurality of previous defectively machined workpieces, and contents of maintenance representing a countermeasure spot and a countermeasure content corresponding to the measurement point and the measurement dimension at the measurement point of the plurality of previous defectively machined workpieces as countermeasures there against; [C2] a machine status database configured to store the first and second machine status information, respectively; and [C3] a notification unit configured to, when the measurement dimension at the measurement point of the defectively machined workpiece included in the workpiece information transmitted from the measurement device and the measurement dimension at the measurement point of a previous defectively machined workpiece among the plurality of previous defectively machined workpieces included in the machining accuracy defect countermeasure database are determined to be similar to each other, [C3i] extract the contents of maintenance corresponding to the measurement dimension at the measurement point of the previous defectively Appeal 2020-005395 Application 15/355,183 4 machined workpiece from the machining accuracy defect countermeasure database, [C3ii] extract the contents of maintenance corresponding to the monitored spot of the first machine status information having the same information as the countermeasure spot included in the extracted contents of maintenance, and [C3iii] output [C3iiia] a first notification recommending execution of the extracted countermeasure contents at the countermeasure spot at the monitored spot in the second machine tool when the status of the monitored spot included in the first machine status information and the status of the monitored spot included in the second machine status information are determined to be similar to each other, and [C3iiib] a second notification including a message that a same machining defect is not likely to occur when the status of the monitored spot included in the first machine status information and the status of the monitored spot included in the second machine status information are determined not to be similar to each other, the monitored spot of the first machine tool includes information specifying a tool or a jig of the first machine tool, the status of the monitored spot of the first machine tool includes a period of time of use, a number of times of use, a temperature, or a pressure of the tool or the jig of the first machine tool, the monitored spot of the second machine tool includes information specifying a tool or a jig of the second machine tool, the status of the monitored spot of the second machine tool includes a period of time of use, a number of times of use, a temperature, or a pressure of the tool or the jig of the second machine tool, and the notification unit is configured to determine Appeal 2020-005395 Application 15/355,183 5 that the measurement dimension at the measurement point of the defectively machined workpiece included in the workpiece information transmitted from the measurement device and the measurement dimension at the measurement point of the previous defectively machined workpiece included in the machining accuracy defect countermeasure database are similar to each other when a difference between the measurement dimension at the measurement point of the defectively machined workpiece included in the workpiece information and the measurement dimension at the measurement point of the previous defectively machined workpiece included in the machining accuracy defect countermeasure database falls within a prescribed threshold, and that the status of the monitored spot included in first machine status information and the status of the monitored spot included in the second machine status information are similar to each other when a difference between (i) the period of time of use, the number of times of use, the temperature, or the pressure of the tool or the jig of the first machine tool and (ii) the period of time of use, the number of times of use, the temperature, or the pressure of the tool or the jig of the second machine tool falls within a prescribed threshold. Appeal Br. 34–37, Claims Appendix (emphases and bracketed information added). Remaining independent claim 11 recites a recommended maintenance notification system having limitations commensurate in scope with limitations C1–3 and C3iii of claim 8, which are dispositive of the instant application on appeal. The Examiner’s Rejections (1) The Examiner rejected claims 8–13 under 35 U.S.C. § 102(a)(1) as being anticipated by Moyne et al. (US 2009/0228129 A1; published Sept. 10, 2009) (hereinafter, “Moyne”) (Final Act. 2–27); and, in the alternative, Appeal 2020-005395 Application 15/355,183 6 (2) Claims 8–13 stand rejected under 35 U.S.C. § 103 as being unpatentable over Moyne (Final Act. 2–27). Appellant’s Contentions Appellant primarily contends, inter alia, that the Examiner erred in rejecting claims 8–13 under 35 U.S.C. § 102(a)(1) and 35 U.S.C. § 103 based on the failure of Moyne to disclose (as arranged in the claims), teach, or suggest various limitations of claims 8 and 11, and based on a failure by the Examiner to articulate a reason to modify Moyne (see Appeal Br. 12–33; Reply Br. 4–30). More particularly, Appellant argues that Moyne fails to disclose, teach, or suggest limitations C3, including C3iiia and C3iiib, recited in claim 8, and as commensurately recited in claim 11. Principal Issues on Appeal Based on Appellant’s arguments in the Appeal Brief (Appeal Br. 12– 33) and Reply Brief (Reply Br. 4–30), the following dispositive issues are presented on appeal: (1) Did the Examiner err in rejecting claims 8–13 under 35 U.S.C. § 102(a)(1) over Moyne because the Examiner fails to show that Moyne discloses, expressly or inherently, each and every limitation and element of claims 8 and 11, as arranged in those claims, including a (a) machining accuracy defect countermeasure database (see e.g., claim 8, limitation C1), (b) machine status database (see e.g., claim 8, limitation C2), and (c) notification unit (see e.g., claim 8, limitation C3), including outputting first and second notifications (see e.g., claim 8, limitation C3iii, including limitations C3iiia and C3iiib), as set forth in claims 8 and 11? Appeal 2020-005395 Application 15/355,183 7 (2) Has Appellant shown that the Examiner erred in rejecting claims 8–13 under 35 U.S.C. § 103 because Moyne fails to teach or suggest a notification unit (see e.g., claim 8, limitation C outputting first and second notifications (see e.g., claim 8, limitation C3iii, including limitations C3iiia and C3iiib), which are based on the comparison of first and second machine tool status information of corresponding first and second machine tools as recited in claim 8 (see e.g., claim 8, limitations C3iiia and C3iiib), and as commensurately recited in remaining independent claims 11? ANALYSIS We have reviewed Appellant’s arguments in the Briefs (Appeal Br. 12–33; Reply Br. 4–30), the Examiner’s rejections (Final Act. 2–27), and the Examiner’s response (Ans. 3–28) to Appellant’s arguments in the Appeal Brief. We concur with Appellant’s contentions that the Examiner erred in finding each of independent claims 8 and 11 (as well as claims 9, 10, 12, and 13 depending respectively therefrom) anticipated by, or obvious in view of, Moyne. We are persuaded by Appellant’s contentions that the Examiner has not sufficiently shown that Moyne discloses (as arranged in the claims), teaches, or suggests the subject matter recited in limitation C3, C3iiia, and C3iiib of claim 8, and the commensurate limitations found in remaining independent claim 11. Our reasoning follows. The USPTO “must examine the relevant data and articulate a satisfactory explanation for its action including a rational connection between the facts found and the choice made.” Motor Vehicle Mfrs. Ass’n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43 (1983) (internal Appeal 2020-005395 Application 15/355,183 8 quotation marks and citation omitted); see also Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309, 1322 (Fed. Cir. 2016) (stating that, as an administrative agency, the PTAB “must articulate logical and rational reasons for [its] decisions” (internal quotation marks and citation omitted)). We will not resort to speculation or assumptions to cure the deficiencies in the Examiner’s fact finding. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In anticipation, “the Board must compare the construed claim to a prior art reference and make factual findings that ‘each and every limitation is found either expressly or inherently in [that] single prior art reference.’” In re Crish, 393 F.3d 1253, 1256 (Fed. Cir. 2004) (citation omitted). To establish anticipation, every element and limitation of the claimed invention must not only be found in a single prior art reference, but must be arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001) (emphasis added). In case of doubt as to whether claims of an application are anticipated, the scales should be inclined toward the applicant. See In re Coley, 40 F.2d 982, 986 (CCPA 1930) (“Where there is such doubt, the scales should be inclined toward the applicant.”). Furthermore, in finding a claim anticipated under 35 U.S.C. § 102, the Board cannot “fill in missing limitations” simply because a skilled artisan would immediately envision them from the prior art. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 851 F.3d 1270, 1274 (Fed. Cir. 2017) (citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015)); see also Microsoft Corp. v. Biscotti, Inc., 878 F.3d 1052, 1069 (Fed. Cir. 2017) (citation omitted) (holding “anticipation is Appeal 2020-005395 Application 15/355,183 9 not proven by ‘multiple, distinct teachings that the artisan might somehow combine to achieve the claimed invention”’). Anticipation: In the instant case, the Examiner’s determinations that Moyne (i) necessarily requires using a server (see Ans. 5); (ii) must necessarily measure the defectively machined dimension of the product (see Ans. 8); (iii) ipso facto, in paragraph 43’s description of finding, matching, and classifying a fault, requires extracting contents of maintenance as recited (see Ans. 12); and (iv) in paragraphs 63, 101, and 187, compares and adjusts manufacturing parameters based on individual product analyses, therefore Moyne teaches a notification unit outputting a notification when first and second machine status information are similar to each other (see e.g., claim 8, limitations C3, C3iii, C3iiia) (see Ans. 13–14), all require us to speculate or fill in missing limitations to meet the subject matter set forth, and as arranged as, in claims 8 and 11. Specifically, the Examiner has not shown the claimed notification unit, as arranged in claims 8 and 11, including outputting the first and second notifications. Although Moyne describes manufacturing products such as wafers and modifying parameters between process runs (see ¶ 63), adjusting parameters and manufacturing machines in response to new settings (see ¶ 101), and machines, that when collected, individually or jointly execute a set of instructions to perform operations (see ¶ 187), Moyne is silent as to outputting notifications using the comparisons of first and second machine status information of first and second respective machine tools, as recited in claims 8 and 11 (see e.g., claim 8, limitations C3iiia, C3iiib). Appeal 2020-005395 Application 15/355,183 10 In addition, with regard to only claim 8,2 reciting a server including a machining accuracy defect countermeasure database (see claim 8, limitation C1), a machine status database (see claim 8, limitation C2), and a notification unit configured (see claim 8, limitation C3), Appellant’s arguments (see Appeal Br. 16; Reply Br. 8–10) that Moyne fails to disclose all of the required elements and functionalities, arranged as in claim 8, as well as claims 9, 10, 12, and 13 depending therefrom, are persuasive. The Examiner’s response to Appellant’s arguments in this respect, found at pages 10 through 11 of the Examiner’s Answer, erroneously determines that because Moyne’s Figure 2 “understandably illustrates a general relationship among the various abstract functionalities” performed “in their nebulous ‘manufacturing environment’” (Ans. 10), “Moyne reasonably anticipates this limitation [e.g., the server including the recited databases (limitations C1 and C2) and notification unit (limitation C3] by teaching that each of these claimed elements perform their complementary functions with Moyne’s comprehensive manufacturing system” (Ans. 10–11). Again, this type of reasoning is more befitting an obviousness, and not an anticipation, rejection. In view of the foregoing, Appellant’s arguments that Moyne fails to anticipate claims 8 and 11 are persuasive, and Appellant has shown the Examiner’s anticipation rejection of claims 8–13 to be in error. And, based on Moyne’s disclosure discussed above, we find the Examiner improperly relies upon Moyne to disclose and anticipate claim limitations C3iiia and 2 Notably, claim 11 does not require a server as arranged as in claim 8. Appeal 2020-005395 Application 15/355,183 11 C3iiib (see Warner, 379 F.2d at 1017), and thus failed to present a prima facie case of anticipation. Obviousness: “[D]ifferences between the prior art reference and a claimed invention, however slight, invoke the question of obviousness, not anticipation.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added). A prior art reference that “must be distorted from its obvious design” does not anticipate a patent claim or new invention. In re Chudik, 851 F.3d 1365, 1374 (Fed. Cir. 2017) (“Prior art that ‘must be distorted from its obvious design’ does not anticipate a new invention.” (quoting In re Wells, 53 F.2d 537, 539 (CCPA 1931))); accord Topliff v. Topliff, 145 U.S. 156, 161 (1892) (“It is not sufficient to constitute an anticipation that the device relied upon might, by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions.” (emphasis added)). Again, as discussed above, there are too many differences between what is recited in claims 8 and 11 and what is disclosed by Moyne for Moyne to anticipate the claims. With this in mind, we now turn to the Examiner’s alternative obviousness rejection, relying upon Moyne as modified. The Examiner’s rationale for modifying Moyne to teach or suggest comparing individual machine tool status information for individual machine tools with each other as claimed, instead of individually with stored information as disclosed by Moyne, is as follows: [I]t would have been obvious to one of ordinary skill in the art apply the fault detection comparison and analysis of Mayne to first and second, distinct, machine tools because Mayne teaches Appeal 2020-005395 Application 15/355,183 12 that the manufacturing execution system (MES 110; [0032]) may control, for example, “all production activities of a set of manufacturing equipment (e.g., all photolithography equipment in a semiconductor fabrication facility)”; see [0032]). Therefore, one of ordinary skill in the art would be reasonably motivated to apply the fault detection and analysis system of Mayne to first and second machine tools of “all photolithography equipment” of the semiconductor fabrication facility, for the predictable benefit of increasing the yield rate of the manufactured products (see [0036, 40, 45-46]). Final Act. 13–14; see also Ans. 18–19, 3–24 (also relying on Moyne ¶ 32 for motivation). However, controlling “all production activities” as described in Moyne’s paragraph 32 does not teach the specifics of how or why one of ordinary skill in the art would desire to compare individual machine tool status information for individual machine tools with each other, instead of with stored information. The Examiner’s reasoning for modifying Moyne is conclusory and resorts to speculation. At best, the Examiner’s proposed rationale for modifying Moyne leaves us to speculate as to how or why one of ordinary skill in the art would modify Moyne to compare machine tool status information of machine tools with each other (see e.g., claim 8 limitation C3, including the comparisons of first and second machine tool status information with each other as recited in limitations C3iiia and C3iiib) as set forth in claim 8, and commensurately set forth in claim 11. See In re Warner, 379 F.2d at 1017; Ex parte Braeken, 54 USPQ2d 1110, 1112 (BPAI 1999) (unpublished) (“The review authorized by 35 U.S.C. [§] 134 is not a process whereby the examiner . . . invite[s] the [B]oard to examine the application and resolve patentability in the first instance.”). Appeal 2020-005395 Application 15/355,183 13 In light of our careful review of Moyne and the Examiner’s reasoning, Appellant’s contentions (see Appeal Br. 19–24; Reply Br. 11–20) that Moyne only compares individual machine tool status information for individual machine tools with stored information (as opposed to comparing machine tool status information for first and second machine tools to each other), are persuasive. In view of the foregoing, we agree with Appellant’s contentions (see Appeal Br. 19–24; Reply Br. 11–20) that the Examiner has not adequately shown that Moyne teaches or suggests limitations C3iiia and C3iiib of claim 8 (i.e., comparing machine tool status information), and the commensurate limitations recited in claim 11. Based on the record before us, the Examiner has not sufficiently shown Moyne teaches or suggests comparing machine tool status information as recited in claim 8, and as commensurately recited in claim 11. As a result, we find that the Examiner (i) incorrectly relies upon Moyne to teach or suggest limitations C3iiia and C3iiib in claim 8, and the commensurate limitations recited in claim 11; and thus, (ii) has not properly established factual determinations and articulated reasoning with a rational underpinning to support the legal conclusion of obviousness for claims 8 and 11. CONCLUSION Based on the record before us, Appellant has shown the Examiner erred in rejecting independent claims 8 and 11, and thus claims 9, 10, 11, and 12 depending respectively therefrom, under 35 U.S.C. §§ 102(a)(1) and Appeal 2020-005395 Application 15/355,183 14 103, and we cannot sustain the Examiner’s anticipation and obviousness rejections of claims 8–13 over Moyne.3 In summary, and for all of the reasons above, we hold as follows: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–13 102(a)(1) Moyne 8–13 8–13 103 Moyne 8–13 Overall Outcome 8–13 REVERSED 3 We recognize that Appellant’s arguments concerning the rejections present additional issues (see, e.g., Appeal Br. 18–26; Reply Br. 2–6). Because we were persuaded of error by the issue regarding limitation C3iii as recited in claim 8 and similarly recited in claim 11, we do not reach the additional issues, as the issue as to limitations C3iiia and C3iiib is dispositive of the appeal.