Ex Parte 7,390,040 B2 et al

Patent Trial and Appeal Board

Oct 14, 2014

90012395 (P.T.A.B. Oct. 14, 2014)

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.
90/012,395 08/07/2012 7,390,040 B2 PPACK-102RX 3163
87897 7590 10/14/2014
Leech Tishman Fuscaldo & Lampl, LLP
The Walnut Plaza
215 N. Marengo Avenue
Suite 135
Pasadena, CA 91101
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
10/14/2014 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 MILOS MISHA SUBOTINCIC, INC.
Patent Owner and Appellant

____________________

Appeal 2014-009048
Reexamination Control 90/012,395
Patent 7,390,040
Technology Center 3900
____________________

Before: EDWARD A. BROWN, CHARLES N. GREENHUT, and
THOMAS F. SMEGAL, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 25
and 49. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a robot having a robot arm with an end
effector. Claim 25, reproduced below, is illustrative of the claimed subject
matter:
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25. A robot with a robot arm for moving a plurality of items
comprising: an end effector comprising:
a) a frame having a longitudinally elongated portion;
b) a plurality of operational members mounted to said
elongated portion having a direction of longitudinal movement on
said elongated portion;
c) an actuation mechanism mounted to said frame and
directly connected to a first operational member of said plurality of
operational members and operable to move said first operational
member longitudinally from a first position to a second position,
and from said second position to said first position;
d) a linking apparatus for linking longitudinally said first
operational member to a second operational member of said
plurality of operational members, said second operational member
not directly connected to said actuation mechanism; said robot
further comprising
(i) a connection mechanism proximate a distal end of said
robot arm connecting a distal end of said robot arm to said end
effector;
(ii) a rotatable shaft extending vertically from said distal end
of said robot arm to engage said actuation mechanism of said end
effector, said shaft being rotatable about an axis that is generally
orthogonal to said direction of longitudinal movement, said shaft
co-operating with said actuation mechanism to convert the rotation
of said shaft about said axis to operate said actuation mechanism to
move said plurality of operational members in said direction of
longitudinal movement; wherein when said actuation mechanism
moves said first operational member longitudinally from said first
position to said second position, said second operational member is
moved longitudinally by said linking apparatus from a third
position to a fourth position.
REJECTION
Claims 25 and 49 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kress, Appellant’s Admitted Prior Art (“APA”) and
Demaurex. Ans. 2.

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OPINION
The portion of Kress cited by the Examiner (Ans. 2, 4; Final Action 3,
5–6) and reproduced in Appellant’s Appeal Brief (App. Br. 12–13 (quoting
Kress col. 7, ll. 3–22)) clearly discloses an “actuation mechanism,” timing
belt 4; that is “directly connected to a first operational member,” either of
the outermost gripper mechanisms 5, 6 (via clamps 65); “a linking
apparatus,” pantograph 44; “linking longitudinally said first operational
member to a second operational member,” any of the inner gripper
mechanisms 31; with that “second operational member not directly
connected to said actuation mechanism.” See Kress Figs. 1, 4–6; col. 7, ll. 2–
49. The inner gripper mechanisms 31, any of which are interpreted by the
Examiner as the recited “second operational member,” are not connected to
the timing belt 4, which is interpreted by the Examiner as the “actuation
mechanism.” Contra App. Br. 12. Rather, the inner gripper mechanisms 31
move by virtue of their connection to pantograph 44, which is interpreted by
the Examiner as the recited “linking apparatus.” Even though the
pantograph 44 in Kress is structurally different from the ‘indirect
connection’ composed of links 50a, as described in Appellant’s
Specification (App. Br. 5), the broad term “linking apparatus” does not,
without more, limit the claims to include only the structure described in
Appellant’s Specification. Kress clearly discloses the elements of direct and
indirect actuation set forth in paragraphs c and d of claims 25 and 49. Final
Action 5–6.
Some disagreement may stem from the fact that Appellant repeatedly
argues limitations that are not recited in the claims: “pantograph 44 of Kress
does not constitute any sort of linking apparatus not directly connected to an
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actuation mechanism.” App. Br. 14; Reply Br. 4, 5. As the Examiner
correctly points out, limitations not recited in the claims cannot be relied
upon for patentability. Final Action 5 (“this argument is inconsistent with
claims 25 and 49”); see In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Nevertheless, the Examiner additionally points out that, although the claims
do not require it, Kress’s pantograph 44 is not, in fact, directly connected to
Kress’s “actuation mechanism,” timing belt 4. Final Act. 5 (“ . . . due at
least to the intervening operational members 5,6.”).
In light of the differences between Kress’s outermost gripper
mechanisms 5, 6 and the inner gripper mechanisms 31, as discussed above, it
is unclear to us why Appellant believes that the Office’s position is that
the VERY SAME connection to the operational members in
Kress show BOTH a direct connection and an indirect
connection (seemingly alleging that one type of connection is
the same as two types of connections) - a seemingly physically
and intellectually impossible allegation by the Examiner
Reply Br. 3–4. Appellant appears to misunderstand the Examiner’s rejection
and/or misinterpret the disclosure of Kress.
The Examiner has provided a complete and correct response to all the
issues raised by Appellant in this appeal. Contra Reply Br. 2. Where, as
here, Appellant does not raise any new issues that were not previously
addressed by the Examiner, the Manual of Patent Examining Procedure
(“MPEP”) § 1207.02 instructs the Examiner to “simply refer[] to the
appropriate portion of the final rejection” as the Examiner has done. Ans. 4
(citing Final Act. pp. 5–6).
Finally, Appellant treats the Examiner’s citation to the original
prosecution (Final Act. p. 6 (citing Office Act. of May 11, 2007, pp. 7–8)) as
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if the Examiner is alleging that something in the original prosecution,
wherein the Office interpreted Kress in a manner consistent with the Office’s
present interpretation, created an admission by Appellant or an estoppel.
App. Br. 15; Reply Br. 5. The reasons for the Examiner’s citation to the
original prosecution have not been made of record. The Examiner’s
rejection does not appear to rest on any remarks made during the original
prosecution, nor does our affirmance of that rejection.

DECISION
The Examiner’s rejection 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).

AFFIRMED

Leech Tishman Fuscaldo & Lampl, LLP
The Walnut Plaza
215 N. Marengo Avenue
Suite 135
Pasadena, CA 91101

Third Party Requester:

Vista IP Law Group, LLP
2040 Main Street
Suite 710
Irvine, CA 92614