The Patent Trial and Appeal Board (“the PTAB”) for the United States Patent and Trademark Office recently published a decision on appeal which overturned an Examiner’s rejection in application number 15/322,059. The PTAB held that the Examiner failed to adequately explain how a disputed reference taught the claimed subject matter. Ex parte Kensuke Matsumura, Masayiki Watanabe, and Yusaku Miyazaki, No. 2019-004113, at 3 (P.T.A.B. May 13, 2020) (hereinafter Kensuke).

The claims at issue concern a mold cleaning system which include a laser oscillator, a laser head, an arm, a control device, and a camera. The camera is “configured to acquire three-dimensional image data” to guide the laser head in irradiating the molding surface with the laser beam. Page 3 of PTAB Decision on Appeal.

The Examiner rejected claims 1, 3, and 5 under 35 U.S.C. 102 as allegedly anticipated by Soska (US 6,369,353 B1) and rejected claim 4  under 35 U.S.C. 103 as allegedly unpatentable over Soska in view of Tokura (US 2010/0038560). Soska relates to a cleaning system for removing residual material from a mold. In some examples, Soska provided a robot which “optionally include[s] a machine vision system provided by, for example, video cameras … so that the robot 14 can recognize the location of the end effector and adjust its position to ensure that the cleaning device 10 performs as desired during a cleaning operation.” Soska, column 4, line 65 through column 5, line 4. The Examiner argued:

“[A] camera, such as the video camera of Soska[,] 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 image data (for example, objects at differing distances from the camera’s lens would appear in different degrees of focus[)].”

 Examiner’s Answer dated February 28, 2019, page 8.

The Yokohama Rubber Co., LTD. (hereinafter Yokohama), the Appellant in the present case, presented several arguments against the cited portions of Soska, including: (1) Soska failed to disclose a camera acquiring any image data of the mold, (2) the camera of Soska was incapable of acquiring image data, and (3) Soska failed to disclose movement of the arm carrying the laser being controlled based on 3D image data of the molding surface. Kensuke, at 5.

The PTAB agreed with the Appellant, stating that the claimed language, under a broadest reasonable interpretation, required “that the camera is positioned and includes hardware and software necessary to acquire 3D image data of the molding surface … sufficient to enable the control device to control motion of the arm on the basis of the image data.” Id., at 6. The PTAB disagreed with the Examiner, who argued that the claim term “configured to” was equivalent to “capable of.” Id. Rather, the PTAB held that “configured to” generally “supports a narrower meaning … to require that the camera is designed such that it is able to perform the particular use, purpose or situation recited in claim 1.” Id.

Furthermore, the PTAB responded to the Examiner’s arguments that the disputed limitations were solely an intended use or intended function. The PTAB held the claimed structure was defined, both in the claims and in the specification, by its actual functionality, not by its possible functionality. Id., at 7. By contrast, the Examiner did not establish that Soska could possibly perform the required three-dimensional functionality because the robotic arm of Soska moved through only predetermined movement sets, and, generally, the Examiner failed to explain how focus differences in a captured two-dimensional image equated to three-dimensional image data. Id., at 7-8.

Altogether, Kensuke provides guidance regarding the acceptable level of detail required in the claims and the specification to overcome a cited reference, which includes similar components but different functionality than the claimed limitations. Applicants can use functional claim language, so long as the language is reliant on the actual design of the claimed element and not just a possible use.