Brooks Automation, Inc.

Patent Trials and Appeals Board

Apr 26, 2021

2020003334 (P.T.A.B. Apr. 26, 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.
14/600,751 01/20/2015 Rhett L. Affleck 1181P014776-US (PAR) 4335
106446 7590 04/26/2021
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
WRIGHT, PATRICIA KATHRYN
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
04/26/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RHETT L. AFFLECK, ANTHONY C. BONORA, ETIENNE P.
CROQUETTE, and ROBERT K. NEEPER
Appeal 2020-0033334
Application 14/600,751
Technology Center 1700

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 2, 4, 45, 49–55, 57, and 59. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed January 20, 2015
(“Spec.”); the Final Office Action entered February 14, 2019 (“Final Act.”);
the Appeal Brief filed November 14, 2019 (“Appeal Br.”); the Examiner’s
Answer entered January 30, 2020 (“Ans.”); and the Reply Brief filed March
30, 2020 (“Reply Br.”).
2 “Appellant” refers to the “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Brooks
Automation, Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s invention is generally directed to a portable cryogenic
workstation including features on a housing or lid that allow for engagement
with automated handling equipment. Spec. ¶ 40. Figure 1H of Appellant’s
drawings is reproduced below:

Figure 1H is a schematic illustration of a portable cryogenic
workstation that includes, inter alia, lid 113’ and housing 110’ surrounding
cavity 110C. Id. ¶ 78. Housing 110’ and lid 113’ include locating features
112’, 113A, 114’ that allow for “automation” to engage with the
workstation. Id.
Claim 1 illustrates the subject matter on appeal, and reads as follows:
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1. A portable cryogenic workstation comprising:

a housing having an internal cavity configured to hold one or
more samples;

a lid for sealing the internal cavity such that the portable
cryogenic workstation is configured for transporting samples
between about room temperature environments to about ultra-
cold environments;

at least one automation interface disposed on one or more of
the housing and lid, the at least one automation interface is
shaped and sized so as to define a predetermined repeatable
interface with predetermined complementing features of and
effect predetermined repeatable automatic engagement with
automated handling equipment; and

a process data capture unit coupled to the housing and
configured to capture process or ephemeral data corresponding
to a predetermined processing characteristic(s) of at least one of
the samples coincident with presence inside the portable
cryogenic workstation.

Appeal Br. 30–31 (Claims Appendix) (emphasis added).
REFERENCES
The Examiner relies on the following prior art references:
Name Reference Date
Junca US 6,694,767 B2 February 24, 2004
Boeke US 2010/0294046 A1 November 25, 2010
Zimmermann US 2011/0219788 A1 September 15, 2011
Cunisse FR 2723181 July 28, 1994

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REJECTIONS
The Examiner maintains the following rejections on appeal:3
I. Claims 1, 2, 45, 49–54, and 57 under 35 U.S.C. § 102(a)(1) as
anticipated by Cunisse;
II. Claims 4 and 55 under 35 U.S.C. § 103 as unpatentable over
Cunisse in view of Zimmermann; and
III. Claim 59 under 35 U.S.C. § 103 as unpatentable over Cunisse
in view of Boeke.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s timely contentions,4 we affirm the Examiner’s rejection
of claims 1, 2, 45, 49–54, and 57 under 35 U.S.C. § 102(a)(1), and rejections
of claims 4, 55, and 59 under 35 U.S.C. § 103, for reasons set forth in the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each issue the Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had

3 The Examiner withdrew the rejection of claims 1, 2, 4, 45, 49–55, 57, and
59 as indefinite under 35 U.S.C. § 112(b) in the Answer. Ans. 8–9.
4 We do not consider the argument Appellant presents at pages 7–8 of the
Reply Brief because Appellant does not show good cause for raising this
argument for the first time in the Reply Brief. 37 C.F.R. § 41.37(c)(1)(iv);
37 C.F.R. § 41.41(b)(2) (arguments raised for the first time in the Reply
Brief that could have been raised in the Appeal Brief will not be considered
by the Board unless good cause is shown).
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failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
We do not address whether the Examiner improperly indicated that
claims 54, 55, and 57 are duplicative of claims 1, 4, and 45 in the Final
Action because this issue is reviewable by petition under 37 C.F.R. § 1.181.
Ex parte Frye at 1078; MPEP § 1201 (9th Ed., Rev. 10, June 2020) (the
Board will not ordinarily hear a question that is reviewable by petition).
Rejection I
We first address the Examiner’s rejection of claims 1, 2, 45, 49–54,
and 57 under 35 U.S.C. § 102(a)(1) as anticipated by Cunisse. Appellant
presents arguments directed to each of independent claims 1 and 54, and
does not separately argue claims 2, 45, 49–53, and 57. Appeal Br. 9–27.
We refer to claim 1 in our discussion because Appellant’s arguments for
claim 54 are directed to similar limitations and are substantially the same as
Appellant’s arguments for claim 1. Compare Appeal Br. 9–18, with Appeal
Br. 18–27.
The Examiner finds that Cunisse discloses a portable cryogenic
workstation including handle 14, which the Examiner finds corresponds to
an automation interface as recited in claim 1. Final Act. 4.5

5 Although the Examiner indicates that the recitation in claim 1 that the
automation interface is “shaped and sized so as to define a predetermined
repeatable interface with predetermined complementing features of and
effect predetermined repeatable automatic engagement with automated
handling equipment,” is merely an intended use, and indicates that the prior
art need only be capable of performing this intended use to anticipate (Final
Act. 3), the Examiner nonetheless finds that handle 14 of Cunisse’s portable
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Appellant argues that Cunisse’s handle 14 is not an automation
interface having the structural features recited in claim 1. Appeal Br. 11.
Appellant’s arguments do not identify reversible error in the
Examiner’s rejection, for reasons that follow.
We begin our analysis by interpreting the recitation in claim 1 of “at
least one automation interface . . . shaped and sized” so as (1) to define a
predetermined repeatable interface with predetermined complementing
features of automated handling equipment, and (2) to effect predetermined
repeatable automatic engagement with automated handling equipment.
We point out initially that “shaped and sized” as recited in claim 1 is
analogous to the phrase “configured to.” We, therefore, interpret claim 1’s
recitation of an “automation interface . . . shaped and sized . . .” to set forth
structural features for how the recited automation interface is designed or
constructed. In re Giannelli, 739 F.3d 1375, 1379–80 (Fed. Cir. 2014)
(explaining that the phrase “configured to” requires more than “mere
capability,” and is synonymous with “made to” and “designed to.”). Thus,
we interpret claim 1 as requiring that the recited automation interface is
designed or constructed to define a predetermined repeatable interface with
predetermined complementing features of automated handling equipment,
and to effect predetermined repeatable automatic engagement with
automated handling equipment.
We do not find an explicit definition of “automation interface” in
Appellant’s Specification. The Specification does, however, use the term

cryogenic workstation corresponds structurally to an automation interface as
described in Appellant’s Specification (Ans. 10). As discussed below, we
base our affirmance of the Examiner’s rejection on this finding, rather than
the Examiner’s interpretation of the limitation at issue as an intended use.
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“interface” to describe numerous structural features of exemplary cryogenic
workstations, and the Specification sets forth multiple specific examples of
structural features that define interfaces with automated handling equipment.
Spec. ¶¶ 54, 56, 78. In particular, paragraph 78 indicates that Appellant’s
cryogenic workstations “may include interface/locating features 112 . . .
such as one or more of kinematic recesses, kinematic grooves, kinematic
slot[] apertures, kinematic pins, and/or any other suitable locating features
that interface with a corresponding/mating kinematic interface/locating
features . . . of the loading unit [automated handling equipment].” The
Specification further refers to the “interface/locating features” as
“gripping/locating features” and “locating/alignment features,” and indicates
that locating features 112’ are structured to allow automated equipment to
grip the workstation. Spec. ¶¶ 56, 78 (“interface/locating features may be
provided on the housing . . . to allow for a handoff of the portable cryogenic
workstation between automated equipment where one effector/gripper
engages a first one of the interface/locating features sets and a second
effector/gripper engages a second one of the interface/locating features
sets.”).
The Specification also makes reference to “gripping/locating features
114, 114’, 113A,” and describes gripping/locating feature 114 alternately as
a “handle” or “grasping feature,” and indicates that the lid of Appellant’s
workstation “may also include any suitable handle or grasping feature 114
that allows operator and/or automated removal of the lid.” Spec. ¶¶ 56, 78.
Appellant specifically identifies “gripping/locating feature” 113A as an
example of the recited “automation interface” (Appeal Br. 3), and the
Specification’s grouping of gripping/locating feature 114 with
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gripping/locating feature 113A indicates that these features are both part of
the same overall category of automation interfaces. The Specification
further describes how gripping/locating features 114 and 113A “allow for
automation” to interact with the cryogenic workstation. Spec. ¶¶ 56, 78.
Under a broadest reasonable interpretation consistent with Appellant’s
Specification, an “automation interface . . . shaped and sized” as recited in
claim 1 thus refers to “any suitable locating feature,” such as a handle,
recess, groove, or slot, on a cryogenic workstation designed or constructed
to define an interface that allows corresponding features on automated
handling equipment to repeatedly and automatically engage or grip the
workstation. In re Morris, 127 F.3d 1048, 1054–55 (Fed. Cir. 1997) (During
prosecution, the PTO gives the language of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as it would be
understood by one of ordinary skill in the art, taking into account any
definitions or other enlightenment provided by the written description
contained in the applicant’s specification.).
As discussed above, the Examiner’s finds that Cunisse’s handle 14
corresponds to the recited automation interface, and we note the structural
similarity of Cunisse’s handle 14 and “gripper/locating feature” or “handle”
114 described in Appellant’s Specification. Cunisse’s portable cryogenic
workstation also includes second handle 18 located on the workstation’s
housing. Cunisse p. 10; Fig. 1. Cunisse discloses that handle 14 allows the
workstation to be gripped by a user, and handle 18 permits displacement of
drawer 16 by a user. Cunisse pp. 9–10; Fig. 1. Handles 14 and 18 are thus
both locating features on Cunisse’s portable cryogenic workstation designed
or constructed to define an interface that allows corresponding features on
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automated handling equipment (a “user”) to repeatedly and automatically
engage or grip the workstation, corresponding to an “automation interface”
as recited in claim 1.
The Examiner responds in the Answer to Appellant’s argument that
Cunisse’s handle 14 is not an automation interface as recited in claim 1 by
pointing out that Appellant’s Specification describes an “automation
interface” as a handle or grasping feature, stating (as discussed above) that
the lid “may also include any suitable handle or grasping feature 114 that
allows operator and/or automated removal of the lid.” Ans. 10; Spec. ¶ 56.
The Examiner finds that, like handle or grasping feature 114 described in
Appellant’s Specification, Cunisse’s handle 14 allows engagement with
automated handling equipment. Ans. 10.
Appellant argues in the Reply Brief that, in the Answer, “the
Examiner points to a specific sentence in Appellant’s [S]pecification while
ignoring the remainder of the [S]pecification which draws a clear distinction
between manual transportation (and the handles used therefore) and
automated transportation (and the structure used therefore).” Reply Br. 3.
Appellant argues that the Specification distinguishes manual transport
handles, such as those disclosed in Cunisse, “and those used for automated
transport.” Id. Appellant argues that paragraph 52 of the Specification
provides an example of a manual transport handle, which is described as a
handle similar to that found on a beverage cooler, but, “[o]n the other hand,
an automation interface for automated transport includes kinematic locating
features . . . necessary for placement of the cryogenic workstation in
predetermined positions to provide for repeatability in automated pick/place
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operations that cannot be achieved with a mere handle as in Cunisse.” Id.
(citing Spec. ¶ 45).
Appellant’s arguments do not address the entirety of the disclosures in
paragraph 52 of Appellant’s Specification, however. Paragraph 52 indicates
that the housing of Appellant’s cryogenic workstation may include “any
suitable handling features . . . that allow a human or automated gripper to
hold and transport the housing. . . In one aspect a foldable handle 190 may
also provide for manual (one handed) transportation of the portable
cryogenic workstation.” Rather than drawing a “distinction between manual
transportation (and the handles used therefore) and automated transportation
(and the structure used therefore)” as Appellant argues, paragraph 52
describes a handle on the housing of Appellant’s cryogenic workstation that
may allow both a human and an automated gripper to hold and transport the
housing. Paragraph 52 thus indicates that handles used for manual
transportation and handles used for automated transportation may be one and
the same.
Although Appellant argues that “an automation interface for
automated transport includes kinematic locating features . . . necessary for
placement of the cryogenic workstation in predetermined positions to
provide for repeatability in automated pick/place operations that cannot be
achieved with a mere handle as in Cunisse,” the Specification indicates that
kinematic locating features are merely an exemplary type of locating feature,
and explicitly indicates that “any other suitable locating features” may
interface with automated handling equipment. Reply Br. 3, Spec. ¶ 78
(stating that Appellant’s cryogenic workstations “may include
interface/locating features 112 . . . such as one or more kinematic recesses,
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kinematic grooves, kinematic slot[] apertures, kinematic pins, and/or any
other suitable locating features that interface with a corresponding/mating
kinematic interface/locating features . . . of the loading unit [automated
handling equipment]” (emphasis added)).
Although Appellant argues that “a mere handle as in Cunisse” cannot
achieve placement of a cryogenic workstation in predetermined positions to
provide for repeatability in automated pick/place operations, Appellant does
not provide any objective evidence establishing that Cunisse’s handle 14 (or
handle 18) is not a locating feature on a cryogenic workstation designed or
constructed to allow corresponding features on automated handling
equipment to repeatedly and automatically engage or grip the workstation
(an “automated interface”), as required by claim 1 as we have interpreted it.
Appellant’s arguments, therefore, do not identify reversible error in
the Examiner’s rejection of claim 1. We, accordingly, sustain the
Examiner’s rejection of claims 1, 2, 45, 49–54, and 57 under 35 U.S.C.
§ 102(a)(1) as anticipated by Cunisse.
Rejection II
We turn now to the Examiner’s rejection of claims 4 and 55 under
35 U.S.C. § 103 as unpatentable over Cunisse in view of Zimmermann.
Appellant presents substantive arguments for claim 4 only, and states that
claim 55 is “patentable over the combination of Cunisse and
Zimmerman[n]” for reasons that are substantially similar to those argued for
claim 4. Appeal Br. 27–28. We, accordingly, limit our discussion to claim
4, which depends from claim 1 and recites that the portable cryogenic
workstation includes a refrigerant media level detector. 37 C.F.R.
§ 41.37(c)(1)(iv)
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The Examiner finds that Cunisse does not disclose a cooling unit
including a consumable media level detector. Final Act. 6. The Examiner
finds, however, that such a cooling unit is known in the art as shown by
Zimmermann’s disclosure of a refrigerant cooling unit that includes coolant
filling level sensor 64. Final Act. 6 (citing Zimmermann ¶¶ 19, 47). In view
of this disclosure in Zimmermann, the Examiner concludes that it would
have been obvious to one of ordinary skill in the art to substitute
Zimmermann’s cooling unit for that of Cunisse as a simple substitution of
one known element for another to obtain the predictable result of a reliable
means of cooling. Final Act. 7.
Appellant argues that Cunisse’s portable cryogenic workstation is
cooled by a Peltier device, which is “a solid state electronic device,” and
Zimmermann’s coolant filling level sensor 64 used for a liquid nitrogen bath
would not serve any purpose in Cunisse’s Peltier device. Appeal Br. 27.
Appellant, however, appears to misapprehend the Examiner’s
rejection. The Examiner proposes “[substituting] the entire cooling unit in
Cunisse with the entire refrigerant cooling unit and the consumable medial
level detector of Zimmermann,” rather than incorporating only
Zimmermann’s filling level sensor into Cunisse’s Peltier device. Ans. 12–
13. Because Appellant’s argument does not address the modification of
Cunisse’s cryogenic workstation proposed by the Examiner, the argument
does not identify reversible error in the Examiner’s rejection, which we
accordingly sustain.6

6 We do not consider the arguments Appellant presents in the Reply Brief for
reasons set forth above in Footnote 4.
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Rejection III
Finally, we turn to the Examiner’s rejection of claim 59 under
35 U.S.C. § 103 as unpatentable over Cunisse in view of Boeke.
Appellant argues that claim 59 is patentable “by reason of its
dependency” from claim 54. Appeal Br. 28. Because we sustain the
Examiner’s rejection of claim 54 for the reasons discussed above in
Rejection I, we also sustain the Examiner’s rejection of claim 59.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 45,
49–54, 57
102(a)(1) Cunisse 1, 2, 45,
49–54, 57

4, 55 103 Cunisse,
Zimmermann
4, 55
59 103 Cunisse, Boeke 59
Overall
Outcome
1, 2, 4, 45,
49–55, 57,
59

TIME PERIOD FOR RESPONSE
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