Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)

Patent Trials and Appeals Board

Jun 17, 2020

14874699 - (D) (P.T.A.B. Jun. 17, 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.
14/874,699 10/05/2015 Atsushi Fukunaga 460152US41 1053
22850 7590 06/17/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
HOLWERDA, STEPHEN
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
06/17/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ATSUSHI FUKUNAGA, DAISUKE UMEKAWA,
KENTA KOBAYASHI, and RYOTA HATAKEYAMA

Appeal 2018-008933
Application 14/874,699
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 1–9. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held on May 28, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“KABUSHIKI KAISHA KOBE SEIKO SHO.” Appeal Br. 1.
Appeal 2018-008933
Application 14/874,699

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STATEMENT OF THE CASE
Subject Matter on Appeal
The Appellant’s “invention relates to a teaching apparatus used for
operation of an industrial robot” and more specifically, “provides a teaching
apparatus exhibiting improved ease of operation that allows the operator to
easily change settings regarding the movement of a robot.” Spec. 1:5–6,
2:20–22. Claim 1, the sole independent claim, is representative of the
subject matter on appeal and is reproduced below.
1. A teaching apparatus that is connected to a control apparatus
controlling a robot and outputs a command intended for the
robot to the control apparatus, the teaching apparatus
comprising:
a setting-manipulating portion provided on a first face of
the teaching apparatus and accepting an operation of changing a
setting that defines a movement of the robot;
an enabling switch provided on a second face of the
teaching apparatus that is opposite the first face, the enabling
switch accepting an operation of changing a state of
electrification of the robot; and
a robot-movement-manipulating portion provided on the
second face and accepting an operation of executing the
movement of the robot,
wherein, seen from a side of the first face, the setting-
manipulating portion provided on the first face is positioned
entirely on a left side or a right side with respect to a center of
the teaching apparatus, and the enabling switch and the robot-
movement-manipulating portion provided on the second face
are positioned entirely on a same side as the setting
manipulating portion,
wherein the teaching apparatus outputs a command
intended for the robot to the control apparatus when the
enabling switch and the robot-movement-manipulating portion
are operated simultaneously.
Appeal Br. 10, Claims App.
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Application 14/874,699

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References
The prior art relied upon by the Examiner is:
Name Reference Date
Oshima US 5,665,945 Sept. 9, 1997
Willner et al. (“Willner”) US 5,874,906 Feb. 23, 1999
Ferla et al. (“Ferla”) US 2004/0068335 A1 Apr. 8, 2004
Cai et al. (“Cai”) US 2011/0234369 A1 Sept. 29, 2011

Rejections
Claims 1, 6, 8, and 9 are rejected under 35 U.S.C. § 103 as
unpatentable over Cai and Willner.2
Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over Cai,
Willner, and Oshima.
Claims 3, 5, and 7 are rejected under 35 U.S.C. § 103 as unpatentable
over Cai, Willner, and Feria.
Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Cai,
Willner, Oshima, and Feria.

ANALYSIS
Claim 1 recites “[a] teaching apparatus that is connected to a control
apparatus controlling a robot and outputs a command intended for the robot
to the control apparatus” including “a setting-manipulating portion provided
on a first face of the teaching apparatus,” in which “the setting-manipulating
portion provided on the first face is positioned entirely on a left side or a

2 Although the Examiner sets forth separate statements for the rejection of
claims 1 and 6 (Final Act. 4–6) and claims 8 and 9 (id. at 12–13), we
consolidate the statements into a single ground of rejection because they are
each based upon same the combination of references.
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right side with respect to a center of the teaching apparatus.” Appeal
Br. 10, Claims App. (emphasis added).
The Examiner finds Cai discloses “a setting-manipulating portion
([control panel] 77 as per [grip handle] 751 or [grip handle] 752) provided
on a first face (‘various thumb-operates switches’) of the teaching apparatus
([dual-handle controller] 70).” Final Act. 4; see Cai ¶ 48, Fig. 7. The
Examiner also finds Cai discloses “the setting-manipulating portion (77 as
per 751 or 752) provided on the first face (‘for actuation by a user’s thumb’)
is positioned entirely on a left side or a right side with respect to a center of
the teaching apparatus (70).” Final Act. 5 (emphasis added); see Ans. 5.
The Appellant argues that Cai’s control panel and switches fail to be
“positioned entirely on a left side or a right side with respect to a center of
the teaching apparatus,” as required by claim 1. Reply Br. 1–2; see Appeal
Br. 5–6. The Appellant’s argument is persuasive.
At the outset, we note that the Examiner construes the “setting-
manipulating portion” in light of the Specification. See Ans. 3 (citing
Spec. 9:3–6). The Specification describes, “the screen change key 47 and
the change keys 48 are collectively referred to as a welding parameter
manipulating portion 49.” Spec. 9:3–4; see id. at Fig. 4. The Appellant
identifies welding parameter manipulating portion 49 as the setting-
manipulating portion. Appeal Br. 2; see Ans. 3. The Examiner construes
the term “setting-manipulating portion” as a region that accepts a change to
a setting operation. See Ans. 4–5. We agree with this construction of the
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Application 14/874,699

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term the “setting-manipulating portion.”3 With respect to the structure of the
“setting-manipulation portion,” the region may, for example, include one or
more keys that accept a change to a setting operation.
Cai’s Figure 7 is reproduced below:

Figure 7 shows dual-handle controller 70. Cai ¶ 48. Controller 70 includes
two ergonomic grip handles 751, 752, “Enable” switches 74, control
panel 77 with various thumb-operated switches, for example, “Mode”
switch 72, “Reset” switch 73, and six unnumbered switches that are
similarly depicted as switches 72 and 73. 4 Id. Four of these unnumbered

3 The Examiner further understands the term “setting-manipulation portion”
as a region that is restricted to an area accessible by a user’s thumb or
thumbs. See Ans. 3–4 (citing Spec. 9:8–11). Here, we disagree with the
Examiner. We do not understand the location of the setting-manipulating
portion –– relative to a user’s thumb or thumbs –– as part of the term’s
construction. Rather, the location of the “setting-manipulating portion” is
limited by the language of claim 1. See supra.
4 Cai, in paragraph 48, describes Figure 7, and references “Mode” switch 32.
Figure 7 does not include reference number 32, but does include reference
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Application 14/874,699

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switches are on the left side of control panel 77 (i.e., the left side set of
switches) and the remaining two unnumbered switches, “Mode” switch 72,
and “Reset” switch 73 are on the right side of control panel 77 (i.e., the right
side set of switches). The left side set of switches are a mirror image of the
right side set of switches across a longitudinal centerline of control panel 77,
as well as controller 70.
As discussed above, the Examiner finds that the claimed “setting-
manipulating portion” reads on the various thumb-operation switches
associated with Cai’s control panel 77. Final Act. 4–5. In making this
finding, the Examiner relies on the thumb-operation switches with respect to
handle 751 or handle 752; i.e., the left side set of switches or the right side
set of switches. See id.; Ans. 5. The Examiner’s use of the word “or”
reveals more than just a disjunctive approach to the application of Cai’s
control panel 77 to the claimed “setting-manipulating portion.” The use of
the word “or” strongly suggests that the Examiner finds that the left side set
of switches and the right side set of switches are part of the setting-
manipulating portion. In other words, the Examiner does not appear to find
that either the left side set of switches or the right side set of switches are
excluded as part of the claimed “setting-manipulating portion.”
Accordingly, the Examiner must explain how the left side set of switches

number 72. Reference number 72 is not referenced in paragraph 48 or in the
remainder of the Specification. Additionally, Figure 3A shows a “mode”
switch 32, but Figure 3A is directed to a different embodiment of Cai’s
invention than Figure 7. Therefore, we understand “Mode” switch 32 in
paragraph 48 as a typographical error and that reference number 72 should
have been written as the “Mode” switch for Figure 7. See Appeal Br. 5 (“a
‘Mode’ switch 72 (mis-numbered as ‘32’ in paragraph [0048] of Cai)[.)]’”
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Application 14/874,699

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and the right side set of switches as a group correspond to the claimed
“setting-manipulating portion.” Because the group of switches are
positioned on both the left side and the right side with respect to a center of
the dual handle controller 70, we disagree with the Examiner’s finding that
these switches of control panel 77 correspond to a “setting-manipulating
portion provided on the first face is positioned entirely on a left side or a
right side with respect to a center of the teaching apparatus,” as recited in
claim 1 (emphasis added). See Tr. 10:3–13:2 (mailed June 11, 2020).
The Examiner fails to rely on the teachings of Willner, Oshima,
and/or Feria in any manner that would remedy the deficiency in the
Examiner’s rejection as discussed above. Thus, we do not sustain the
Examiner’s rejections of claims 1–9.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 6, 8, 9 103 Cai, Willner 1, 6, 8, 9
2 103 Cai, Willner, Oshima 2
3, 5, 7 103 Cai, Willner, Feria 3, 5, 7
4 103 Cai, Willner, Oshima,
Feria
4
Overall
Outcome
1–9

REVERSED