Ex Parte Watanabe et al

Board of Patent Appeals and Interferences

Jun 2, 2009

10692801 (B.P.A.I. Jun. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ATSUSHI WATANABE and KAZUNORI BAN
____________________

Appeal 2009-001084
Application 10/692,801
Technology Center 3600
____________________

Decided:1 June 2, 2009
____________________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001084
Application 10/692,801

2
STATEMENT OF THE CASE
Atsushi Watanabe and Kazunori Ban (Appellants) seek our review
under 35 U.S.C. § 134 of the final rejection of claims 1-46. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
Appellants’ claimed invention pertains to a material handling system
utilizing two robots to convey objects from one process to another. (Spec.
3.) Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An object conveying system for
conveying objects from a first process to a second
process, comprising:
a first robot having an articulated arm and a
hand at a distal end of the arm, said hand holding
and taking out a container containing objects
positioned therein from the first process and
conveying and positioning the held container using
said arm to a predetermined position; and
a second robot holding and taking out an
object contained in the container held by said hand
of said first robot and conveying the held object to
the second process, said predetermined position
being within an operation range of said second
robot.

Appeal 2009-001084
Application 10/692,801

3
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Nelson US 6,723,174 B2 April 20, 2004

The following Examiner’s rejections are before us for review:
1. Claims 1-46 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite because of the phrase “container containing
objects positioned therein from the first process”;
2. Claims 1, 2, 12, and 13 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for reciting process steps within
apparatus claims; and
3. Claims 1-46 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Nelson.

ISSUES
Appellants do not address the merits of the first indefiniteness
rejection. (App. Br. 9; Reply Br. 3.) Thus, the first point of contention for
our consideration pertains to the second indefiniteness rejection. The
Examiner concluded that independent claims 1, 2, 12, and 13 each recite
process steps within an apparatus claim, and rejected those claims as
indefinite. (Ans. 3.) The Appellants respond that those claims do not
contain process steps, but properly recite conveying systems using
permissible functional language. (App. Br. 15; Reply Br. 5-6.) Therefore,
the first issue on appeal is:
Appeal 2009-001084
Application 10/692,801

4
Do the system claims 1, 2, 12, and 13 contain process limitations that
render those claims indefinite?
The next issue before us concerns the rejection of claims 1-46 as
anticipated by Nelson. The Examiner concluded that the “articulated arm”
recited in Appellants’ claims encompasses an arm having a telescoping or
sliding joint, and found that Nelson’s engager actuator 912 constitutes such
an arm. (Ans. 10.) Appellants argue that the broadest reasonable
construction of “articulated arm” does not encompass a structure that moves
only longitudinally, like Nelson’s actuator. (Reply Br. 4.) Therefore, the
second issue before us is:
Is an actuator that moves only longitudinally encompassed within the
scope of the recited “articulated arm”?

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. The ordinary meaning of the word “articulate” includes
“[c]onsisting of sections united by joints; jointed.” THE AMERICAN
HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000).
2. The ordinary meaning of the word “arm” includes “[a] part
similar to a human arm, such as the forelimb of an animal or a long part
projecting from a central support in a machine.” Id.
3. Figure 2 of Appellants’ Specification is reproduced below:
Appeal 2009-001084
Application 10/692,801

5

Figure 2 “is a schematic view showing an object conveying system
according to a first embodiment of [Appellants’] invention.” (Spec. 9.)
4. Appellants’ Specification states: “FIG. 2 shows an object
conveying system according to a first embodiment of this invention, which,
instead of the double housing robot 1 used in the system shown in FIG. 1,
comprises an articulated robot 1 similar to the robot 30 shown in FIG. 1.”
(Spec. 11.)
5. Figures 1 and 5 of the Specification also depict robots 1 and 30.
(Spec. 10-11, 21-22.) The Specification describes those figures as depicting
embodiments of Appellants’ invention. (Id. at 9, 10, 21.)
6. Nelson, referring to figures 32-37, states:
Each of the transfer robots 970 has an articulated arm 974, and
an end effector 976 on the end of the arm 974, with the end
effector 976 adapted to engage a single wafer 818. An arm
driver 978 is connected to the articulated arm 974, and has one
or more motors for driving the arm segments, as controlled by
the controller 872.
(Nelson, col. 17, ll. 56-62.)
Appeal 2009-001084
Application 10/692,801

6
7. Nelson’s articulated arm 974 has joints that appear to be
capable of rotational movement in at least one plane. (See Nelson, figs. 32,
34, 36.)
8. Nelson also states:
Referring to FIGS. 24A-24E, the process robot 66 has an elbow
joint 256 and a wrist joint 262, joined by a single segment or
forearm 260. Consequently, in contrast to earlier known
systems having shoulder, elbow and wrist joints, joined by two
arm segments, the process robot 66 achieves a range of vertical
reach via movement of the robot arm 255 on the lift rail 254,
rather than by articulation of arm segments.
(Nelson, col. 11, ll. 44-51.)
9. Nelson’s robot arm 255 travels linearly on the lift rail 254. (See
Nelson, figs. 23, 24A-24E.)
10. Nelson discloses “an engager actuator 912 which moves the
engager plate 910 longitudinally, i.e., in a direction from the front wall 806
[of the semiconductor processing system enclosure] to the back wall 810,
and perpendicular to those walls.” (Nelson, col. 17, ll. 16-18; see id., col.
15, ll. 1-5 (identifying the enclosure).) Nelson does not describe the engager
actuator 912 as “articulated.”

PRINCIPLES OF LAW
The second paragraph of 35 U.S.C. § 112 states:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the applicant regards as his invention.
The primary purpose of this provision is to provide notice to the public of
the metes and bounds of the claimed invention. See In re Hammack, 427
Appeal 2009-001084
Application 10/692,801

7
F.2d 1378, 1382 (CCPA 1970). A single claim combining two separate
statutory classes of invention is indefinite, and is properly rejected under 35
USC § 112, second paragraph, for failing to particularly point out and
distinctly claim the invention. See IPXL Holdings, L.L.C. v. Amazon.com,
Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d
1548, 1550-51 (BPAI 1990).
We determine the scope of the claims in patent applications by
giving the claims “their broadest reasonable interpretation consistent with
the specification” and by reading the claim language “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)
(citations omitted). We must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See SuperGuide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987) (citations omitted).

ANALYSIS
The Rejection of Claims 1-46 under 35 U.S.C. § 112, Second Paragraph, as
Being Indefinite Because of the Phrase “container containing objects
positioned therein from the first process”
The Examiner rejected claims 1-46 under the second paragraph of
§ 112. (Final Rej. 2.) The Examiner concluded that the phrase “container
containing objects positioned therein from the first process” in independent
Appeal 2009-001084
Application 10/692,801

8
claims 1, 2, 12, 13, 24, 25, 35, and 36 renders the claims indefinite. (Id.; see
also Ans. 3.) We understand the remaining claims, which depend from one
of these independent claims, to also stand rejected as indefinite for the same
reason. Appellants state that “[t]his ground of rejection is not addressed in
the present Appeal.” (App. Br. 9; Reply Br. 3.) Accordingly, we summarily
affirm the rejection of claims 1-46 under 35 U.S.C. § 112, second paragraph,
as being indefinite.

The Rejection of Claims 1, 2, 12, and 13 under 35 U.S.C. § 112, Second
Paragraph, as Being Indefinite for Reciting Process Steps Within Apparatus
Claims
Appellants argue the rejected claims as a group. (App. Br. 15; Reply
Br. 5.) We select claim 1 as the representative claim, and claims 2, 12, and
13 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Claim 1 recites a system comprising “a first robot having an
articulated arm and a hand …, said hand holding and taking out a container
… and conveying and positioning the held container using said arm … and a
second robot holding and taking out an object … and conveying the held
object ….” Appellants argue that phrases such as “taking out” and
“conveying and positioning” constitute permissible functional language
rather than process steps. (Reply Br. 5; see also App. Br. 15.)
Functional language defines something by what it does rather than by
what it is. In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). As Appellants
correctly note (Reply Br. 6), there is nothing intrinsically wrong with
defining a feature of a claimed invention using functional language.
Swinehart, 439 F.2d at 212. However, Appellants’ claim 1 does not clearly
recite structure for performing certain functions, but rather can be interpreted
Appeal 2009-001084
Application 10/692,801

9
as purporting to require the actual performance of the recited acts. It is
unclear as to whether infringement of claim 1 would occur when, for
example, one creates a system having, inter alia, a first robot capable of
holding and taking out a container, or whether infringement would occur
when the robot actually performs the acts of holding and taking out a
container. Thus, claim 1 fails to apprise a person of ordinary skill in the art
of its scope, and is invalid under the second paragraph of § 112. See IPXL
Holdings, L.L.C., 430 F.3d at 1383-1384. Accordingly we sustain the
rejection of claim 1 as indefinite, as well as the rejection of claims 2, 12, and
13, which fall with claim 1.

The Rejection of Claims 1-46 under 35 U.S.C. § 102(b) as Being Anticipated
by Nelson
As mentioned above, independent claim 1 recites “a first robot having
an articulated arm.” Appellants disagree with the Examiner’s conclusion
that Nelson’s engager actuator is “an articulated arm” when that phrase is
given its broadest reasonable interpretation. (Ans. 10; Reply Br. 4.)
Appellants and the Examiner appear to be in agreement that, given
their respective ordinary meanings, “arm” refers to a part similar to a human
arm, and “articulated” means that the part has a joint or joints. (See App. Br.
13; Ans. 9; Reply Br. 4; see also Facts 1, 2.) The disagreement concerns the
types of joints encompassed by the claim phrase. The Examiner concluded
that “[a]n arm having a telescoping or sliding joint, like [Nelson’s engager
actuator 912]” is “an articulated arm.” (Ans. 10.) Appellants contend that a
joint in “an articulated arm” is “a joint similar to [that in] a human arm” and
is capable of pivotal movement. (App. Br. 13-14; Reply Br. 4.) Appellants
Appeal 2009-001084
Application 10/692,801

10
argue that Nelson’s actuator is capable of only longitudinal movement, and
thus is not articulated. (Id.)
Appellants’ Specification is of little help in construing “an articulated
arm.” The Specification contains a passing reference to “an articulated
robot” shown in figure 2. (Fact 4.) The Specification refers to that figure as
depicting “a first embodiment” of Appellants’ invention. (Facts 2, 3.)
Appellants contend that figures 1 and 5 also show the articulated arm. (App.
Br. 13.) The Specification describes those two figures as also depicting
embodiments of the invention. (Fact 5.) Appellants’ have not expressed a
clear intent for the claims and the embodiments depicted in the figures of the
Specification to be strictly coextensive, and we decline to construe the
claims as limited to those embodiments. See Phillips v. AWH Corp., 415
F.3d 1303, 1323 (Fed. Cir. 2005) (en banc); SuperGuide Corp., 358 F.3d at
875. Likewise, we decline to limit articulated joints to human-like joints
absent persuasive evidence that one of ordinary skill in the robot arts would
have such an understanding. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
at 1364.
Next we turn to the Nelson reference for some indication as to the
understanding of the phrase “articulated arm” to one of ordinary skill in the
robot arts. See Phillips, 415 F.3d at 1317 (prior art cited during prosecution
is intrinsic evidence for claim construction purposes). Nelson discloses a
robot arm 974 having joints that appear to be capable of rotational
movement, and refers to that arm as an “articulated arm.” (Facts 6, 7.)
However, Nelson does not refer to the engager actuator 912 as articulated.
(Fact 10.) Further, Nelson contrasts linear movement with articulation.
(Facts 8, 9.) Based on the limited evidence before us concerning the
Appeal 2009-001084
Application 10/692,801

11
meaning of “articulated arm” in the robot arts, we conclude that the phrase
does not encompass a structure that is capable of only linear movement.
Nelson describes the engager actuator 912 as moving longitudinally.
(Fact 10.) As such, based on a preponderance of the evidence, we do not
find that Nelson’s engager actuator is an articulated arm as claimed. The
Examiner does not identify any other structure in Nelson as corresponding to
Appellants’ claimed first robot having an articulated arm. Thus, the
Examiner has failed to make a prima facie showing of anticipation, and we
cannot sustain the rejection of claim 1.
Independent system claims 2, 12, and 13 also recite “a first robot
having an articulated arm.” Independent method claims 24, 25, 35, and 36
recite “using a first robot having an articulated arm.” The remaining claims
on appeal depend from one of the independent claims. Accordingly, for the
reasons discussed with respect to claim 1, we also cannot sustain the
rejection of claims 2-46 as anticipated by Nelson. This disposes of all of the
claims subject to the anticipation rejection. Thus, we do not reach
Appellants’ additional argument that claims 6, 17, 29, and 40 are not
anticipated because Nelson fails to disclose a recited signal (App. Br. 14;
Reply Br. 4-5).

CONCLUSIONS
As Appellants do not address the rejection of claims 1-46 under 35
U.S.C. § 112, second paragraph, as being indefinite because of the phrase
“container containing objects positioned therein from the first process,” we
summarily affirm that rejection.
Appeal 2009-001084
Application 10/692,801

12
We conclude that the system claims 1, 2, 12, and 13 contain process
limitations that render those claims indefinite. Therefore, the Appellants
have failed to show that the Examiner erred in rejecting those claims under
35 U.S.C. § 112, second paragraph.
We further conclude that an actuator that moves only longitudinally is
not encompassed within the scope of an “articulated arm” as claimed.
Therefore, the Appellants have shown that the Examiner erred in rejecting
claims 1-46 as anticipated by Nelson.

DECISION
The decision of the Examiner to reject claims 1-46 is affirmed.
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) (2007).

AFFIRMED

mls

STAAS & HALSEY LLP
SUITE 700
1201 NEW YORK AVENUE, N.W.
WASHINGTON DC 20005