Ex Parte Malin

Patent Trial and Appeal Board

Nov 15, 2017

12689701 (P.T.A.B. Nov. 15, 2017)

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.
12/689,701 01/19/2010 Cosmas G. MALIN P37905 6358
7055 7590 11/17/2017
GREENBLUM & BERNSTEIN, P.L.C.
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
EXAMINER
TIGHE, BRENDAN P
ART UNIT PAPER NUMBER
3652
NOTIFICATION DATE DELIVERY MODE
11/17/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte COSMAS G. MALIN
Appeal 2017-001610
Application 12/689,7011
Technology Center 3600
Before JOYCE CRAIG, ROBERT E. NAPPI, and
ALEX S. YAP, Administrative Patent Judges.
YAP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
24^46, 51, and 52. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 According to Appellant, the real party in interest is Liconic AG. (App. Br.
2.)
Appeal 2017-001610
Application 12/689,701
STATEMENT OF THE CASE
Introduction
Appellant states “[t]he invention relates to a low-temperature storage
for laboratory samples with automated access.” (January 19, 2010
Specification (“Spec”) 1.) Independent claims 24, 31, and 38, reproduced
below, are illustrative of the claimed subject matter:
24. An automated low-temperature storage for storing
laboratory samples, the storage comprising:
a storage zone structured and arranged for storing the
samples that is maintainable at a first temperature below -20°C;
a handling zone located above the storage zone that is
maintainable at a second temperature above the first temperature
and below 0°C;
a chamber laterally adjacent to the storage zone and the
handling zone for storing the samples at a third temperature that
is higher than the first temperature and below 0°C;
an opening connecting the handling zone and the chamber;
and
an automated transport device being arranged at least
partially in the handling zone and being structured and arranged
to move the samples between the storage zone, the handling
zone, and the chamber.
31. An automated low-temperature storage for storing
laboratory samples comprising:
a housing;
a storage zone arranged in the housing for storing the
samples and being maintained at a first temperature below -20°C;
a handling zone arranged in the housing above the storage
zone that is maintained at a second temperature above the first
temperature and below 0°C;
an automated transport device being located at least
partially in the handling zone and structured and arranged to
access the samples in the storage zone,
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an access zone arranged in the housing above the handling
zone that is maintained at an access temperature above the first
temperature;
a separating wall separating the access zone and the
handling zone, wherein the separating wall is at least partially
removable to at least one of provide access from the access zone
to the handling zone and/or provide access from the access zone
to the storage zone;
a manhole in the housing being structured to allow a user
entry into the access zone; and
a door structured and arranged to close the manhole.
38. An automated low-temperature storage for storing
laboratory samples, the storage comprising:
a storage zone arranged for storing the samples that is
maintainable at a first temperature below -20°C;
a handling zone arranged above the storage zone that is
maintainable at second temperature above the first temperature;
an automated transport device being arranged at least
partially in the handling zone and being structured and arranged
to access the samples in the storage zone;
a plurality of carriers extending from above into the
storage zone, wherein each carrier comprises a vertical mounting
plate; and
a plurality of storage racks for receiving the samples,
wherein each storage rack comprises a plurality of storage
locations above each other, and;
wherein each mounting plate carries several storage racks,
which are structured to be hooked into the mounting plate.
Prior Art and Rejections on Appeal
Herrmann et al.
(“Herrmann”) US 5,524,981 June 11,1996
Wing et al.
(“Wing”)
US 2003/0020387 Al Jan. 30, 2003
Junca et al. US 6,694,767 B2 Feb. 24, 2004
(“Junca”)
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Remmers
(“Remmers ‘730”)
US 7,021,730 B2 Apr. 4, 2006
Remmers
(“Remmers ‘553”)
US 7,497,533 B2 Mar. 3, 2009
Owen et al.
(“Owen”)
US 7,513,127 B2 Apr. 7, 2009
Neeper et al.
(“Neeper”) US 8,252,232 B2 Aug. 28, 2012
Claims 24—30, 382-46, 51, and 52 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Junca in view of Neeper. (See Office
Act. 3-13.)
Claims 31—373 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Junca, in view of Neeper, and further in view of Owen.
(See Office Act. 13-19.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. We are not persuaded that the
Examiner erred in rejecting claims 24—37, 51, and 52 under 35 U.S.C. § 103
2 The Examiner lists Herrmann, Wing, Remmers ‘730, and Remmers ‘553 to
“provide support for the official notice taken in the prior office action” that
“all teach vertical storage racks with a plurality of storage locations above
each other which are structured to be hooked into mounting plates in a
refrigerated environment.” (September 30, 2014 Non-Final Action (“Office
Act.”) 22-23.)
3 While the Examiner did not list claim 37 in the Office Action for this
rejection (Office Act. 13), the Examiner, nevertheless, addresses claim 37
for this rejection (Id. at 19). Therefore, we will also address claim 37 for
this appeal.
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but are persuaded that the Examiner erred in rejecting claims 38-46 under
35U.S.C. §103. We agree with, and adopt as our own, the findings and
reasons set forth by the Examiner, regarding claims 24—37, 51, and 52, in the
action from which this appeal is taken and in the Answer (Ans. 3—17; Office
Act. 10—19, 24—28). We highlight and address specific arguments and
findings for emphasis as follows.
Claims 24—30, 51, and 52
Appellant contends the combination of Junca and Neeper fails to
teach or suggest several limitations of claim 24. (App. Br. 10-19;
Reply 2—7.) We have reviewed Appellant’s arguments and are not
persuaded by Appellant’s contentions. In addition, we agree with the
Examiner’s findings regarding these limitations. (Office Act. 10—13;
Ans. 2—13.) Appellant contends that neither Junca nor Neeper teaches
or suggests “a handling zone located above the storage zone . . . ,” “a
chamber laterally adjacent to the storage zone and the handling
zone . . . ,” and “an opening connecting the handling zone and the
chamber.” (App. Br. 12—19.) Nonobviousness, however, cannot be
established by attacking the references individually when the rejection
is predicated upon a combination of prior-art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). For example,
Appellant contends that Junca does not teach or suggest a chamber
because the “third zone” in Junca is not a chamber (App. Br. 12—13),
however, the Examiner is relying on the combination of Junca and
Neeper to teach a chamber:
5.02 Junca does not teach:
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• the third zone is a chamber laterally adjacent to the
storage zone and the handling zone for storing the samples
at a third temperature that is higher than the first
temperature and below 0°C;
5.03 Neeperteaches:
• a chamber (800) laterally adjacent to the handling zone
(140) for storing the samples at a third temperature that is
higher than the first temperature and below 0°C (Column
8 Lines 1-5);
It would have been obvious to one of ordinary skill in the art at
the time of invention to combine the multiple zone automated
storage system taught by Junca with the multiple zone and
chamber automated storage system with individual zone and
chamber temperature control taught by Neeper in order to
provide a higher temperature in operating areas to prevent
equipment failure as well as isolation of various zones to
maintain temperatures.
(Office Act. 4—5, emphases added.)
We are similarly not persuaded by Appellant’s contention that “no
reasonable combination of the applied art would have been understood by
those ordinarily skilled in the art to have rendered obvious the above-
claimed embodiments of the invention.” (App. Br. 12.) According to
Appellant, “there is no arguable suggestion found in NEEPER to change the
‘third zone’ of JUNCA to a chamber, as such a modification would prevent
JUNCA from operating in its intended manner, i.e., the gantry 7 would be
prevented from delivering the sample to door 17.” (App. Br. 18.) First,
Appellant presents only attorney arguments, unsupported by evidence. It is
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well settled that mere attorney arguments and conclusory statements, which
are unsupported by factual evidence, are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson,
494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not evidence).
Second, “it is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). Third, a reason to
combine teachings need not be expressly stated in any prior art reference. In
re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There need only be an
articulated reasoning with rational underpinnings to support a reason to
combine teachings. Id. at 988; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (holding that an obviousness analysis “need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). Importantly, the
Examiner has articulated a reason with rational underpinnings regarding why
a person of ordinary skill in the art would have “combine[d] the multiple
zone automated storage system taught by Junca with the multiple zone and
chamber automated storage system with individual zone and chamber
temperature control taught by Neeper.” (Office Act. 5.)
Appellant also contends that the Examiner’s construction of the term
“laterally” is incorrect. (App. Br. 15—16; Reply 5—6.) The Examiner
construes the term based on “Merriam-Webster’s definitions of [] ‘lateral’
as: ‘of or relating to the side[.]’” (Ans. 8.) According to the Examiner, “the
third zone [in Junca is] laterally adjacent to the handling zone and the
storage zone as the third zone shares a common side border with both the
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handling zone and the storage zone” on the other side of the third zone. (Id.)
Appellant contends that one of ordinary skill in the art “would have []
understood [the third zone] to have [been] diagonally adjacent, not laterally
adjacent, as recited in independent claim 24.” (App. Br. 16.) Appellant,
however, does not explain why the Examiner’s construction, which is based
on the dictionary definition of the term “lateral” (i.e., “of or relating to the
side”) is unreasonable or overly broad. Moreover, Appellant has not
persuaded us that the “third zone” in Figure 1 of Junca is not “of or relating
to the side” of the handling zone and the storage zone. Even assuming
arguendo that the storage zone is diagonally adjacent to the third zone, as
Appellant contends (App. Br. 16), Appellant does not explain persuasively
why the storage zone is not “of or relating to the side” (the construction of
the term “lateral”) of the third zone.
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 24. Thus, we sustain the 35 U.S.C. § 103 rejection of
claim 24, as well as the 35 U.S.C. § 103 rejection of claims 25—30, 51, and
52, which are not argued separately. (App. Br. 24.)
Claims 31—37
Appellant contends the combination of Junca, Neeper, and Owens
fails to teach or suggest several limitations of claim 31. (App. Br. 25—28;
Reply 9—11.) We have reviewed Appellant’s arguments and are not
persuaded by Appellant’s contentions. In addition, we agree with the
Examiner’s findings regarding these limitations. (Office Act. 13—19; Ans.
13—17.) Appellant contends that neither Junca, Neeper, nor Owens teaches
or suggests “an access zone arranged in the housing above the handling zone
. . .,” “a separating wall separating the access zone and the handling
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zone . . . and “a manhole in the housing being structured to allow a user
entry into the access zone.” (App. Br. 12—19.) However, similar to
Appellant’s complaints against claim 24, nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior-art disclosures. See In re Merck, 800
F.2d at 1097. Moreover, we are similarly not persuaded by Appellant’s
contention that “no reasonable combination of JUNCA in view of NEEPER
and further in view of OWEN would have even arguably been understood by
those ordinarily skilled in the art to have rendered obvious the combination
of features recited in at least independent claim 31.” (App. Br. 27—28.)
Appellant presents only attorney arguments, unsupported by evidence. It is
well settled that mere attorney arguments and conclusory statements, which
are unsupported by factual evidence, are entitled to little probative value. In
re Geisler, 116 F.3d at 1470. Furthermore, we are not persuaded by
Appellant’s contention that “none of the applied documents of record
arguably suggest the recited access zone or the recited at least partially
removable separating walls to provide access from the access zone to the
handling zone and/or provide access from the access zone to the storage
zone, in at least independent claim 31.” (App. Br. 27.) In re Sneed, 710
F.2d at 1550 (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”).
Moreover, a reason to combine teachings need not be expressly stated in any
prior art reference. In re Kahn, 441 F.3d at 989. There need only be an
articulated reasoning with rational underpinnings to support a reason to
combine teachings. Id. at 988; see KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007). Here, the Examiner has articulated reasons with rational
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underpinnings regarding why a person of ordinary skill in the art would have
combined the prior art references. (Office Act. 16—17; Ans. 16—17.)
For the foregoing reasons, we are not persuaded of Examiner error in
the rejection of claim 31. Thus, we sustain the 35 U.S.C. § 103 rejection of
claim 31, as well as the 35 U.S.C. § 103 rejection of claims 32—37, which
are not argued separately. (App. Br. 28.)
Claims 38—46
Independent claim 3 8 recites, in part, “a plurality of carriers extending
from above into the storage zone, wherein each carrier comprises a vertical
mounting plate.” The Examiner points to Figure 5 and column 2, lines 53 to
55 of Junca as teaching a vertical mounting plate. (Office Act. 8.)
Appellant contends that Junca does not teach a vertical mounting plate.
(App. Br. 20—23.) In response, the Examiner further points to Figure 1 of
Junca as “clearly showing] at least one flat vertical member with multiple
article supporting members mounted thereon and connected to the shutter
plate (6). . . .” (Ans. 12—13.) We have reviewed the Specification and the
cited portions of Junca and agree with Appellant that the cited figures and
portions in Junca do not teach or suggest “a vertical mounting plate.”4
Therefore, we are persuaded of Examiner error in the rejection of
claim 38, and of claims 39-46, which depend from claim 38, and do not
sustain the 35 U.S.C. § 103 rejection of these claims.
4 Because we do not sustain the Examiner’s rejection for the reasons
discussed herein, we need not address Appellant’s further arguments. See
Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984) (finding an
administrative agency is at liberty to reach a decision based on “a single
dispositive issue”).
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DECISION
We affirm the decision of the Examiner to reject claims 24—37, 51,
and 52 under 35 U.S.C. § 103(a). We reverse the decision of the Examiner
to reject claims 38—46 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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