The Yokohama Rubber Co., LTD.

Patent Trials and Appeals Board

May 13, 2020

2019004113 (P.T.A.B. May. 13, 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.
15/322,059 12/23/2016 Kensuke Matsumura 3138-461.PCT.US 8071
162045 7590 05/13/2020
Thorpe North & Western/Yokohama
P.O. Box 1219
SANDY, UT 84091-1219
EXAMINER
SHAHINIAN, LEVON J
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
05/13/2020 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):
braegger@tnw.com
patentdocket@tnw.com
warren.archibald@tnw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENSUKE MATSUMURA, MASAYIKI WATANABE, and
YUSAKU MIYAZAKI
Appeal 2019-004113
Application 15/322,059
Technology Center 1700
Before JAMES C. HOUSEL, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5 under 35 U.S.C. § 102(a)(1)
as anticipated by Soska (US 6,369,353 B1, iss. Apr. 9, 2002) and claim 4
under 35 U.S.C. § 103 as unpatentable over Soska in view of Tokura (US

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as The Yokohama
Rubber Co., LTD. Appeal Brief (“Appeal Br.”) filed November 16, 2018, at
3.
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2010/0038560 A1, pub. Feb. 18, 2010).2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to a mold cleaning system. Spec. 1:4, Title.
The mold cleaning system comprises a laser oscillator and head configured
to irradiate a molding surface of a mold to be cleaned with a laser beam, an
arm configured to move the laser head freely in three dimensions (“3D”), a
control device configured to control motion of the arm, and a camera
configured to acquire 3D image data of the molding surface. Id. at 2:24–29.
By controlling the arm motion based on the 3D image data acquired by the
camera, the laser head is moved along the molding surface while irradiating
with the laser beam to clean the surface. Id. at 2:29–32. Appellant discloses
that acquiring 3D image data of the molding surface of a mold to be cleaned
avoids the need to invoke mold shape data from a database and verify
correspondence between the mold to be cleaned and the database shape data
every time cleaning is performed. Id. at 2:33–3:1. Further, Appellant
discloses that movement of the laser head based on 3D image data acquired
from the actual mold to be cleaned prevents scratching while permitting
efficient cleaning of the molding surface, even for molds having complicated
molding surfaces or with molding surfaces that may change over time. Id. at
3:1–10. In addition, Appellant discloses that the mold cleaning system may
also be configured to determine a cleaning state of a cleaned molding

2 The anticipation rejection of claims 2 and 6, and the obviousness rejection
of claims 7 and 8 have been withdrawn by the Examiner and are not before
us on appeal. Examiner’s Answer (“Ans.”) dated February 28, 2019, at 7.
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surface and, for positions on the molding surface failing to satisfy a preset
clean standard, perform additional cleaning with the laser beam. Id. at 3:11–
19.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
1. A mold cleaning system comprising:
a laser oscillator;
a laser head configured to irradiate a molding surface of a
mold with a laser beam supplied from the laser oscillator;
an arm configured to move the laser head freely in three
dimensions;
a control device configured to control motion of the arm;
and
a camera configured to acquire three-dimensional image
data of a molding surface of a mold to be cleaned;
wherein by controlling the motion of the arm on a basis
of the image data acquired by the camera when the mold is
cleaned, the laser head is moved along the molding surface
while irradiating with the laser beam to clean the molding
surface.
OPINION
Rejection 1: Anticipation by Soska
The Examiner rejects claims 1, 3, and 5 under 35 U.S.C. § 102(a)(1)
as anticipated by Soska. The dispositive issue before us is whether Appellant
has identified reversible error in the Examiner’s finding that Soska’s video
camera is “configured to acquire three-dimensional image data of a molding
surface of a mold to be cleaned” and thereby meets the camera recitation of
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claim 1. We answer this question in the affirmative and, therefore, will not
sustain the Examiner’s rejections based on Soska.
Anticipation is established when a single prior art reference discloses
all features of the claimed invention. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990). Inherent disclosure requires that the prior art reference
“necessarily include[s] the unstated limitation.” Atofina v. Great Lakes
Chem. Corp., 441 F.3d 991, 1000 (Fed. Cir.2006); see also Cont’l Can Co.
USA v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).
“‘[P]robabilities or possibilities’” are not enough to find that the prior art
inherently discloses something not explicitly present. In re Oelrich, 666 F.2d
578, 581 (CCPA 1981).
The Examiner finds that Soska teaches a robotic laser mold cleaning
system equivalent to the system of claim 1 comprising, among other things,
a video camera configured to acquire 3D image data of the molding surface
of a tire mold to be cleaned. Ans. 3–4. The Examiner further finds that Soska
teaches that by controlling the laser arm motion on the basis of this acquired
image data, the laser head is moved along the molding surface while
irradiating with the laser to clean the molding surface. Id. at 4, 7. In addition,
the Examiner finds that Soska’s camera is “inherently capable of acquiring
image data, and if the subject matter in the visual field of the camera is a
three-dimensional object, that image data would necessarily be three-
dimensional data.” Id. at 8. The Examiner explains that objects at differing
distances from the camera’s lens would appear in different degrees of focus
within the image data acquired by the camera. Id.
Appellant argues that Soska fails to teach or suggest a camera
acquiring any image data of the mold, whether 3D or otherwise. Appeal
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Br. 10. Further, Appellant contends that Soska’s camera is not capable of
acquiring 3D image data. Id. at 11. Appellant urges that Soska’s teaching of
using a camera to recognize and adjust the location of the end effector is not
based on image data of a molding surface. Id. at 10. In this regard, Appellant
asserts that Soska fails to disclose how the end effector is recognized and
how this recognition relates in any way to a molding surface. Id. at 10–11.
Appellant additionally argues that Soska fails to teach that the movement of
the arm carrying the laser head is controlled based on 3D image data of a
molding surface of a mold to be cleaned. Id. at 11.
A central issue before us is the meaning of the phrase “configured to”
as used throughout claim 1, and in particular, the meaning of the limitation
“a camera configured to acquire three-dimensional image data of a molding
surface of a mold to be cleaned.” As we note above, the Examiner interprets
this limitation to mean a camera capable of acquiring three-dimensional
image data of a molding surface of a mold to be cleaned. Ans. 7–8. On the
other hand, Appellant’s position is that this limitation requires a camera that
is specifically designed and positioned to capture three-dimensional image
data of a molding surface of a mold to be cleaned. Appeal Br. 13.
We begin, appropriately, with the claim’s words. See Amazon.com,
Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001)
(“Only when a claim is properly understood can a determination be made . . .
whether the prior art anticipates and/or renders obvious the claimed
invention.”). The PTO’s traditional pre-issuance approach has been to give
claims “their broadest reasonable construction ‘in light of the specification
as it would be interpreted by one of ordinary skill in the art.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis added). Under
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a broadest reasonable interpretation, words of the claim must be given their
plain meaning, unless such meaning is inconsistent with the Specification.
Having considered the respective interpretations of the Examiner and
Appellant, we find the broadest reasonable interpretation is that the camera
is positioned and includes hardware and software necessary to acquire 3D
image data of the molding surface of a mold to be cleaned sufficient to
enable the control device to control motion of the arm on the basis of the
image data when the mold is cleaned, thereby moving the laser head along
the molding surface while irradiating with the laser beam to clean the
molding surface. Although the Examiner applies a broad meaning to the
phrase “configured to” to mean “capable of” (Ans. 8), we find the ordinary
and customary meaning of this phrase, especially in light of Appellant’s
Specification, supports a narrower meaning for this phrase to require that the
camera is designed such that it is able to perform the particular use, purpose
or situation recited in claim 1. See Aspec Eyewear, Inc. v. Marchon
Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (The phrase “adapted
to” construed narrowly to mean “configured to”, as opposed to “capable of”
or “having the capacity of”.); Boston Scientific Corp. v. Cordis Corp., 2006
WL 3782840 (N.D. CA. 2006) (“A widely accepted dictionary definition of
the word ‘configure’ means ‘[t]o design, arrange, set up, or shape with a
view to specific applications or uses.’ American Heritage Dictionary 386
(4th ed. 2000).”)
This interpretation is bolstered by Appellant’s Specification, which
discloses “three-dimensional image data of a molding surface of the mold to
be cleaned is acquired by a camera. As such, the shape of the molding
surface of the mold can be accurately grasped at the time of cleaning.” Spec.
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2:33–36; see also id. at 7:29–32. Appellant further discloses “a camera
configured to acquire three-dimensional image data of a molding surface of
a mold to be cleaned.” Id. at 2:28–29 (emphasis added). In addition,
Appellant discloses that “[t]he camera 3 and the temperature sensor 8 are
attached to a tip of the arm 6, and the image data acquired by the camera 3
and the temperature data detected by the temperature sensor 8 are input into
the control device 7.” Id. at 4:37–5:2. In operation, Appellant discloses that
“the arm 6 is moved to dispose the camera 3 at an appropriate position and
three-dimensional image data of the molding surface 12 of the mold 11 is
acquired.” Id. at 7:1–3. Although the Examiner finds that Appellant relies on
unclaimed features including a camera system having plural lenses arranged
in a configuration with overlapping visual fields to utilize a parallax effect to
acquire 3D image data (Ans. 8), Appellant contends, and we agree, that
these features were not part of Appellant’s argument. Reply Br. 4.
Applying this interpretation to the claims, we find Soska is not
configured to acquire three-dimensional image data of a molding surface of
a mold to be cleaned; wherein by controlling the motion of the arm on a
basis of the image data acquired by the camera when the mold is cleaned, the
laser head is moved along the molding surface while irradiating with the
laser beam to clean the molding surface. The Examiner fails to adequately
explain how image data of a 3D object acquired by any camera, or Soska’s
disclosed video camera in particular, inherently is 3D image data of that
object. Even assuming the Examiner is correct that objects appearing at
different distances would appear in different degrees of focus, the Examiner
fails to adequately explain how such focus differences equate to 3D image
data. Indeed, the Examiner’s position essentially is that 2D images captured
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by a camera are actually 3D image data, a position which is not supported on
this record.
The Examiner also took the position that the limitations at issue are
functional and do not serve to distinguish the claimed mold cleaning system
over Soska. Ans. 8. As noted by the Examiner, apparatus claims must be
distinguished from the prior art in terms of structure rather than intended use
or intended function. In re Danly, 263 F.2d 844, 847 (CCPA 1959).
However, there is nothing intrinsically wrong in using functional language,
defining something by what it does rather than by what it is, in drafting
patent claims. In re Swinehart, 439 F.2d 210, 212 (CCPA 1971).
Here, the claimed structure is defined by how it functions, not by how
it is possible to function. Danly, 263 F.2d at 847. In order to establish that a
prior art structure teaches a claim’s functional recitation, it is necessary to
establish that the prior art is necessarily capable of functioning as claimed.
In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) (“The inherent teaching of a
prior art reference, a question of fact, arises both in the context of
anticipation and obviousness.”); In re King, 801 F.2d 1324 (Fed. Cir. 1986)
(“Under the principles of inherency, if a structure in the prior art necessarily
is capable of functioning as claimed, the claim is anticipated.”). The
Examiner’s observation that the functional language is mere intended use,
without more, does not establish that the prior art is capable of performing
the required function. Here, the Examiner has not established that Soska is
necessarily capable of functioning as claimed. To the contrary, we note
Soska teaches that the robotic arm “is moved through at least one
predetermined set of movements with respect to the tire mold.” Soska 6:27–
31 (emphasis added). Soska further teaches that the controller, which directs
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the movement of the robotic arm, is fully programmable to move the robotic
arm through a plurality of different predetermined sets of movements to
allow the cleaning system to be used with various molds of different sizes
and shapes. Id. at 6:36–41. These disclosures suggest that movement of the
robotic arm is controlled based on information retrieved from a database
rather than 3D image data of the mold to be cleaned acquired by the camera.
Therefore, we are persuaded that Soska does not anticipate the claimed
invention.
Accordingly, we cannot sustain the Examiner’s anticipation rejection
of claim 1, and dependent claims 3 and 5, based on Soska.
Rejection 2: Obviousness over Soska and Tokura
The Examiner rejects claim 4 under 35 U.S.C. § 103 as unpatentable
over Soska in view of Tokura. However, the Examiner does not rely on
Tokura to remedy the deficiencies in Soska as applied to claim 1, as
discussed above. Accordingly, for the same reasons as set forth above, we
likewise do not sustain the Examiner’s obviousness rejection of claim 4.
CONCLUSION
For the reasons given above and in the Appeal and Reply Briefs, the
Examiner’s decision to reject claims 1, 3, and 5 under 35 U.S.C. § 102(a)(1)
as anticipated by Soska and claim 4 under 35 U.S.C. § 103 as unpatentable
over Soska in view of Tokura is reversed.

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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3, 5 102(a)(1) Soska 1, 3, 5
4 103 Soska, Tokura 4
Overall
Outcome
1, 3–5

REVERSED