Kabushiki Kaisha Yaskawa Denki

Patent Trials and Appeals Board

Apr 30, 2021

2020005319 (P.T.A.B. Apr. 30, 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.
15/475,524 03/31/2017 Haruhiko KOIKE 481619US 2296
22850 7590 04/30/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
JARRETT, RONALD P
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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):
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 HARUHIKO KOIKE,
KANJI WATANABE, and KOJI HARA
____________

Appeal 2020-005319
Application 15/475,524
Technology Center 3600
____________

Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

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 YASKAWA DENKI. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention generally relates to “a working robot and a
working system.” Spec. 1, ll. 11–12.
Claims 1 and 11 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal and is reproduced below (with
added lettered bracketing for reference):
1. A food distribution working robot comprising:
[(a)] a robot arm for food distribution comprising a
plurality of arm members turnably coupled;
[(b)] a control box housing a control circuitry that controls
operation of the robot arm; and
[(c)] a support frame supporting the control box and the
robot arm such that an installation position of the control box and
an installation position of the robot arm overlap when viewing
from a vertical direction, a clearance is formed between the
control box and the robot arm, and at least one direction of the
clearance is in an opened state.
Appeal Br. 11 (Claims App.).

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Kitahara et al. (“Kitihara”) US 8,136,422 B2 Mar. 20,2012
Ono et al. (“Ono”) US 2008/0222883 A1 Sept. 18, 2008
Yoshimoto US 2016/0067842 A1 Mar. 10, 2016
Akaha US 2016/0288339 A1 Oct. 6, 2016

REJECTIONS
Claims 1–16 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement.
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Claims 1 and 11–14 stand rejected under 35 U.S.C. § 102(a)(1) as
being anticipated by Ono.
Claims 2–9 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ono and Kitahara.
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Ono and Yoshimoto.
Claims 15 and 16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ono and Akaha.

OPINION
Written Description
The Examiner rejects independent claims 1 and 11, and thus all of the
claims, because the element recited in both claims of “‘control circuitry’ . . .
does not have support in the original Specification.” Final Act. 9.
Specifically, the Examiner finds that a controller can comprise a mechanism
or a person and because the Specification does not disclose “an electronic
controller” or “control circuitry,” the Specification’s controller “does not
inherently include ‘control circuitry.’” Ans. 4.
The Appellant contends that the Specification “clearly recites a
‘controller’ which would be understood by one of ordinary skill in the art as
being ‘control circuitry.’” Appeal Br. 4. We agree with the Appellant that
in light of the Specification housing the controller in a control box and
“indicat[ing] that the controller controls operation of the robotic arm,” one
of ordinary skill in the art “would immediately appreciate that the
‘controller’ described in the [S]pecification cannot reasonably be ‘a person’
that regulates something,” nor is it “reasonable to assert that the controller is
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a non-electronic mechanism that operates the robotic arm as the
[S]pecification clearly indicates that the robotic arms are powered via
motors” (Reply Br. 2). As such, we agree that “one of ordinary skill in the
art would understand that a controller would include ‘circuitry.’” Appeal
Br. 4.
Thus, we do not sustain the Examiner’s rejection of the claims under
35 U.S.C. § 112(a).

Anticipation — Claims 1 and 11–14
The Appellant argues claims 1 and 11–14 as a group. See Appeal
Br. 5, 9. We select independent claim 1 as representative of the group, with
claims 11–14 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Appellant first contends that the Examiner’s rejection of
independent claim 1 is in error because Ono does not disclose “a food
distribution working robot having a robot arm for food distribution,” as
recited in the preamble and limitation (a). Appeal Br. 5; see also Reply
Br. 3. We are not persuaded of Examiner error by this argument.
The Examiner finds, in relevant part, that claim 1’s recitations of
“food distribution” in the preamble and “for food distribution” in limitation
(a) are functional recitations that “merely state the purpose or intended use
of the claimed invention.” Ans. 4–5. Specifically, the Examiner finds that
Ono discloses “a working robot (60) which can be used for food distribution,
the working robot comprising: a robot arm (61-65) which can be used for
food distribution comprising a plurality of arm members (63, 63t and 65)
turnably coupled.” Final Act. 10.
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Ono discloses “a production system general-purpose cell and a
production system using the general-purpose cell.” Ono ¶ 125. The
“general purpose cell 100 includes a base unit 10, which supports a robot
60,” and has a cabinet 43 containing a control device disposed within a
lower portion. Id. ¶¶ 127, 132, 133, 135, 182. Robot 60 is “movable in the
X, Y, and Z axis directions of three dimensional coordinates on a region 12
having a planar shape of quadrangle, which is a top surface of the base
unit 10.” Id. ¶¶ 135, 136. “[A] material supply area 50a serving as a unit of
supplying a workpiece to a cell 100 . . . and a material removal area 50b
serving as a unit of removing the workpiece from the cell 100 . . . extend
from side plates 13a and 13b, respectively” in such a way to be within the
motion range of the robot 60. Id. ¶ 137. The robot 60 has a first arm 63 and
a second arm 65 that are separately rotatable. Id. ¶ 139. In an edge of
second arm 65, a third shaft 66 extends, the third shaft 66 having a rotatable
head unit 67 that has a tool fixture 68. Id. ¶¶ 139–141. The general purpose
cell 100 can include a parts tray Tr from which parts can be picked up by the
robot 60. See id. ¶¶ 151–153, 167.
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Ono discloses the structural limitations of a parts distribution
working robot comprising a robot arm for part/workpiece distribution. The
part/workpiece is capable of being food and the robot arm is capable of
being used for food distribution. The claimed recitations of “food
distribution” and “for food distribution” are recitations with respect to the
manner in which the claimed robot is intended to be employed; it does not
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differentiate the claimed robot comprising a robot arm from Ono’s working
robot comprising a robot arm.
The Appellant argues “as noted by the court in Schreiber, ‘[a] patent
applicant is free to recite features of an apparatus either structurally or
functionally.’ Schreiber, 128 F.3d at 1478.” Appeal Br. 6. “Yet, choosing
to define an element functionally, i.e., by what it does, carries with it a risk.”
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Here, as in
Schreiber,
Although [the Appellant] is correct that [Ono] does not address
the use of the disclosed structure to [distribute food], the absence
of a disclosure relating to function does not defeat the
[Examiner’s] finding of anticipation. It is well settled that the
recitation of a new intended use for an old product does not make
a claim to that old product patentable. . . . Accordingly, [the
Appellant’s] contention that [their] structure will be used to
[distribute food] does not have patentable weight if the structure
is already known, regardless of whether it has ever been used in
any way in connection with [food].
128 F.3d at 1477 (citing cases).
We are also unpersuaded of Examiner error by the Appellant’s
argument that “nothing in any portion of Ono describes that a clearance is
formed between the control box and the robot arm, and at least one
direction of the clearance is in an opened state,” as recited in limitation (c).
Appeal Br. 6–8; Reply Br. 3–5.
The Examiner finds, in relevant part, that Ono discloses the claimed
clearance in disclosing a space between the robot 60 and the region 12.
Final Act. 10 (citing Ono ¶¶ 125–150, Figs. 1, 2). Specifically, the
Examiner finds
Ono’s Figure 1 clearly shows a clearance between the robot arm
(61–65) and 12 (see annotated Figure 1 of Ono below), that
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Ono’s control box (43) is below 12, and that the clearance
between the robot arm and 12 is open on at least one side (side
closest to 50b).
Ans. 5.

Ono’s Figure 1 as annotated by the Examiner to show a clearance
between the robot 60 and the region 12 atop the control box 43.
The Appellant acknowledges that Ono discloses a space between the
robot 60 and the region 12 (Appeal Br. 7), but contends that Figure 1 “does
not show the robot during operation” (id.). See also Reply Br. 3.
Specifically, the Appellant argues that during operation, the shaft 66 would
be extended such that there would not be a space between the robot 60 and
the region 12 having a tray with parts thereon. Appeal Br. 7; Reply Br. 3.
This argument is not commensurate with the claim language. Claim 1 does
not require that there must be a full clearance during operation, nor does it
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require the clearance be “between the furthest protrusion of the robot arm (to
the conveyance conveyor 11 and the tray placing table 15) and the control
box 59.” Appeal Br. 8; Reply Br. 4. Rather, the claim merely requires that
there is a clearance somewhere between the robot arm and the control box,
where “at least one direction of the clearance is in an opened state.” Id.
at 11 (Claims App.). The Specification, including the claims, does not
provide a definition for “an opened state.” See, e.g., Spec. 9–10 (describing
the clearance). The “opened state” describes a direction of the clearance;
one of ordinary skill in the art would not understand the opened state to be
an operational state of the robot arm. Rather, one of ordinary skill in the art
would understand that the “at least one direction of the clearance is an
opened state” requires that there is some space somewhere between the robot
arm and control box in an upper-to-lower, front-to-rear, or right-to-left
orientation. See Spec. Figs. 1, 2. Ono discloses such a space.
For the above reasons, we are not persuaded of Examiner error, and
we sustain the Examiner’s rejection under 35 U.S.C. § 102 of independent
claim 1 and thus also the rejection of claims 11–14 that stands with that of
claim 1.

Obviousness — Claims 2–10, 15, and 16
The Appellant contends that the Examiner’s rejection of dependent
claim 10 is in error because
it is entirely unclear how the two armed robot of Yoshimoto
could he combined with the system of Ono which is an entirely
different type of robot arm. For instance, looking at Figure 3 of
Ono, it is clear that the two arms shown in Figure l of Yoshimoto
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could not be applied in any logical way to the structure shown in
Figure 3 of Ono.
Appeal Br. 9; see also Reply Br. 5.
Claim 10 recites “[t]he food distribution working robot according to
claim 1, wherein the working robot is a double arm robot including the two
robot arms.” Appeal Br. 13 (Claims App.). The Examiner acknowledges
that Ono does not teach “wherein the working robot is a double arm robot
including the two robot arms.” Final Act. 14. The Examiner relies on
Yoshimoto for teaching this limitation and determines “in view of
Yoshimoto’s teachings, it would have been obvious to one of ordinary skill
in the art at the time the invention was effectively filed to have modified
Ono’s robot to be a double arm robot to improve productivity.” Final
Act. 14–15 (citing Yoshimoto ¶¶ 5, 35–51, Fig. 2); see also Ans. 6.
We find the Examiner has established a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The Appellant does not contest the Examiner’s findings that
Yoshimoto teaches a double arm robot including two robot arms. Rather,
the Appellant argues that Yoshimoto’s two arms could not be applied to
Ono’s structure. Appeal Br. 9; Reply Br. 5. However, the Appellant
provides no explanation, evidence, or technical reasoning why one could
not, or would not, modify Ono’s single arm configuration of its robot to have
a double arm configuration to improve productivity as taught by Yoshimoto
and determined by the Examiner, or why doing so would not be “logical.”
Thus, we are not persuaded of error on the part of the Examiner, and
we sustain the Examiner’s rejection under 35 U.S.C. § 103 of dependent
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claim 10. We also sustain the Examiner’s rejections under 35 U.S.C. § 103
of dependent claims 2–9, 15, and 16, against which the Appellant provides
no argument.
CONCLUSION
The Examiner’s decision to reject claims 1–16 is sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–16 112(a) Written Description 1–16
1, 11–14 102(a)(1) Ono 1, 11–14
2–9 103 Ono, Kitahara 2–9
10 103 Ono, Yoshimoto 10
15, 16 103 Ono, Akaha 15, 16
Overall
Outcome
1–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED