Ex Parte Lert et alDownload PDFPatent Trial and Appeal BoardJun 30, 201612757354 (P.T.A.B. Jun. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121757,354 04/09/2010 2512 7590 Perman & Green, LLP 99 Hawley Lane Stratford, CT 06614 07/01/2016 FIRST NAMED INVENTOR John Lert 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 ATTORNEY DOCKET NO. CONFIRMATION NO. l 127P013868-US(PAR) 2500 EXAMINER BERRY JR, WILLIE WENDELL ART UNIT PAPER NUMBER 3652 MAILDATE DELIVERY MODE 07/01/2016 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 JOHN LERT, STEPHEN C. TOEBES, ROBERT SULLIVAN and NATHAN ULRICH Appeal2014-005527 Application 12/757 ,354 Technology Center 3600 Before LINDA E. HORNER, CHARLES N. GREENHUT, and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE John Lert et al. (Appellants) 1 seek our review under 35 U.S.C. § 134 of the Examiner's Final Rejection of claims 22-25 under 35 U.S.C. § 102(b) as anticipated by Deandrea (US 6,149,366, iss. Nov. 21, 2000); and claims 1---6 under 35 U.S.C. § 103(a) as unpatentable over Deandrea and Page (US 4,307,988, iss. Dec. 29, 1981).2 We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 According to Appellants, the real party in interest is Symbotic LLC. Appeal Br. 2. 2 Claims 7-21 have been canceled. Id. Appeal2014-005527 Application 12/757 ,354 CLAIMED SUBJECT MATTER Claims 1 and 22 are independent. Claims 1 and 22 are reproduced below and illustrate the claimed subject matter, with disputed limitations emphasized. 1. A transport system for a storage and retrieval system having an array of storage levels, each storage level having respective storage areas, the transport system comprising: a continuously moving vertical loop conveyor having a frame and support shelves movably coupled to the frame, each support shelf being configured to hold one or more uncontained case units in predetermined areas of the support shelf; and transfer vehicles disposed on respective ones of the storage levels, the continuously moving vertical loop conveyor having a conveyor to transfer vehicle inteiface configured to transfer the uncontained case units substantially directly between each support shelf and the transfer vehicles for transport to the storage areas in substantially one transfer vehicle picking operation. 22. An automated case unit storage system for handling case units that are adapted for being palletized for shipping to and from a warehouse, the automated case unit storage system compnsmg: a multilevel array of storage spaces arrayed on multiple static levels and in multiple rows at each level, each storage space of the array being capable of holding an uncontained case unit therein; a continuous vertical lift having a lift support configured for holding and lifting the uncontained case unit to the levels of the array, the continuous vertical lift moving the lift support substantially continuously at a substantially constant rate; 3 and 3 The Examiner's Advisory Action dated June 19, 2013 is internally inconsistent on its face, stating both that Appellants' amendments to claim 22 submitted on May 30, 2013, both will be and will not be entered. See 2 Appeal2014-005527 Application 12/757 ,354 an input for inputting the uncontained case units onto the lift support of the continuous vertical lift; an output for outputting the uncontained case units from the lift support of the continuous vertical lift; wherein the continuous vertical lift is configured so that outputted uncontained case units from the continuous vertical lift are disposed in a predetermined order that is independent from an order sequence in which the uncontained cases are input to the continuous vertical lift. Claim Amendment, dated March 29, 2013. ANALYSIS Anticipation of claims 22-25 by Deandrea We are persuaded by Appellants' arguments that the Examiner fails to establish anticipation of claims 22-25 by Deandrea. See Appeal Br. 5-9 and Reply Br. 2-3. The Examiner finds that Deandrea anticipates independent claim 22 by disclosing an automated case unit storage system having, inter alia, a "continuous vertical lift ... having a lift support ( 19) configured for holding and lifting the uncontained case unit to the levels of the array, the continuous vertical lift moving the lift support substantially continuously at a Advisory Act. 1; See also Reply Br. 2. The second page of the Advisory Action clarifies, however, the reasons for the Examiner's refusal to enter the amendment because it would raise new issues that would necessitate further search. Advisory Act. 2. The Examiner also provided a copy of the first page of the May 30, 2013 Amendment annotated with the instructions "DO NOT ENTER" on the face along with the Advisory Action. Based on these facts, it is our understanding that the amendments of claim 22 were not entered. Accordingly, we review the final rejection of claim 22 as if the amendments were not entered. 3 Appeal2014-005527 Application 12/757 ,354 substantially constant rate." Final Act. 2-3. The Examiner reasons that "giving the limitation its broadest interpretation, Deandrea clearly has a lift that is configured to move at a substantial constant rate." Id. at 6. Appellants take issue with the analysis and conclusions presented in the Final Action, first pointing out that "the Examiner appears to be ignoring the actual language of the claim," which, according to Appellants, recites "the continuous vertical lift substantially continuously moving the lift support at a substantially constant speed."4 Appeal Br. 6. Appellants also explain that "Deandrea discloses an elevator 19 (which operates exactly the same way an elevator in an office building does)," where it "clearly cannot move continuously because [the elevator] has to stop to allow the car 15 to drive on and off the rails 20, 21 and [also] has to stop to reverse direction." Id. at 7 (emphasis deleted). More specifically, Appellants reason that "there is absolutely nothing in Deandrea that expressly or inherently discloses that the elevator 19 is 'substantially continuously moving' at 'a substantially constant speed."' Id. Appellants conclude that "[t ]he elevator 19 in Deandrea is simply not capable of what is recited in Applicant's claim [22]." Id. at 8. In the Answer, and without responding to the specific arguments advanced by Appellants, the Examiner's position is that "the features upon which [Appellants rely] are not recited in the rejected claim." Ans. 6. However, as Appellants point out, "[i]n the 'Response to Argument' section of the Examiner's Answer the Examiner again fails to consider the actual teachings of the cited references and the actual language of Appellant's 4 Appellants argue the proposed amended claim language of claim 22 that was refused entry by the Examiner. 4 Appeal2014-005527 Application 12/757 ,354 claim(s)." Reply Br. 2-3. Thus we agree with Appellants' characterization of the operation of Deandrea and find the position taken by the Examiner to be unsupported by the evidence of record. In particular, we find that Deandrea does not disclose "a continuous vertical lift having a lift support configured for holding and lifting the uncontained case unit to the levels of the array, the continuous vertical lift moving the lift support substantially continuously at a substantially constant rate" as recited in un amended claim 22. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the Examiner's decision rejecting claims 22-25 as anticipated by Deandrea. Obviousness of Claims 1-6 over Deandrea and Page We are persuaded by Appellants' arguments that the Examiner fails to establish obviousness of the subject matter of claims 1---6 over Deandrea and Page. See Appeal Br. 10-14; Reply Br. 3. In rejecting claim 1, the Examiner finds that Deandrea discloses a transport system for a storage and retrieval system, inter alia, with a "vertical conveyor having a conveyer (15) to transfer vehicle interface configured to transfer the uncontained case units substantially directly between each support shelf and the transfer vehicles," and that Page "discloses that it is known to have a vertical loop conveyor (56) in a storage system." Final Act. 4 (emphasis added). Based on the foregoing, the 5 Appeal2014-005527 Application 12/757 ,354 Examiner reasons that "[i]t would have been obvious ... to have modified Deandrea with the teachings of Page et al. for the purpose of providing additional functionality to the storage system of Deandrea." Id. Appellants first respond that because "[ t ]he load in Deandrea is carried by the car 15 which also carries the trolley 16 such that the entire car (including the trolley and the load [30] thereon) is driven onto the elevator," that "transfer of the load 30 while on the car 15 to the elevator 19 [of Deandrea] is clearly not the same [as] transferring the load 30 from the car 15 to the elevator 19," as recited by claim 1. Appeal Br. 10-11. Appellants also point out that although the Examiner "asserts that Page 'discloses that it is known to have a vertical loop conveyor (56) in a storage system,"' that the Examiner's stated reason for modifying Deandrea with this teaching of Page "appears to be nothing more than a mere conclusory statement that is insufficient to support an obviousness rejection." Id. at 11. Furthermore, Appellants argue that "[t]o this point in the prosecution no articulated reasoning has been provided by the Examiner with respect to the combination of Deandrea and Page." Id. at 12. The Examiner responds that "when Deandrea's conveyor [car 15] exits the support shelf [elevator 19] it transfers (transfer means according to Webster's - to carry from one place to another) case units from the support shelf to the transfer vehicle [16]." Ans. 6. Additionally, the Examiner responds to Appellants' argument "that Page fails to disclose a continuously moving vertical loop conveyor," by again reasoning that "Page's element [56] as stated in col. 5, lines 35--40 meets this limitation." Id. The Examiner concludes that "the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art 6 Appeal2014-005527 Application 12/757 ,354 cannot be the basis for patentability when the differences would otherwise be obvious." Id. However, Appellants point out that "the bare assertion that[] Page discloses the article carrier 40 having chains 56 is clearly not sufficient to establish a prima facie case of obviousness," where "elevator 19 in Deandrea must come to a stop so that the car 15 can drive off and exit the elevator 19." Reply Br. 3. Appellants also reason that "stopping the elevator [of Deandrea] so that a car 15 can drive off the elevator is wholly incompatible with a conveyor that does not stop moving," and that "the modification of Deandrea with Page would clearly change the principle of operation of Deandrea." Reply Br. 3. We agree. The key to supporting any rejection under 35 U.S.C. § 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), noted that the analysis supporting a rejection under 35 U.S.C. § 103 should be made explicit. The Federal Circuit has also stated that "rejections on obviousness grounds cannot be sustained with mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. The Examiner has not articulated adequately a reason that would have prompted one of ordinary skill in the art to replace the elevator of Deandrea with the vertical loop conveyer of Page to provide a "continuously moving vertical loop conveyer", as recited by claim 1. Accordingly, we agree with Appellants that, based on the evidence before us, the Examiner has not 7 Appeal2014-005527 Application 12/757 ,354 demonstrated that the claimed subject matter would have been obvious to one having ordinary skill in the art. For the foregoing reasons, we do not sustain the rejection of claims 1-6 as unpatentable over Deandrea and Page. DECISION The Examiner's prior-art rejections are reversed. REVERSED 8 Copy with citationCopy as parenthetical citation