Ex Parte Neeper

Patent Trial and Appeal Board

Jun 6, 2017

13555957 (P.T.A.B. Jun. 6, 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.
1181P014742-US (PAR) 7668
EXAMINER
WHATLEY, BENJAMIN R
ART UNIT PAPER NUMBER
1798
MAIL DATE DELIVERY MODE
13/555,957 07/23/2012
2512 7590
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
06/06/2017
Robert K. Neeper
06/06/2017 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 ROBERT K. NEEPER
Appeal 2016-003731
Application 13/555,9571
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision rejecting claims 1—20 in the above-identified application.2 We have
jurisdiction pursuant to 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Brooks Automation Inc.
Appeal Br. 2, Sept. 22, 2015.
2 Final Office Action, Jan. 21, 2015 [hereinafter Final Action]; Examiner’s
Answer, Dec. 30, 2015 [hereinafter Answer],
Appeal 2016-003731
Application 13/555,957
BACKGROUND
Appellant’s invention relates to automated storage and retrieval
systems. Spec.312. According to the Specification, a component of such a
system is “a robotic system, e.g., a sample group holder conveyor, for
removing and replacing the racks and sample group holders from the storage
compartment with minimal impact to the low temperature environment.” Id.
14. The Specification states that there may be complications due to thermal
effects of the sample group holder material. Id. 1 6. In particular, “the
sample group holders can experience changes in length on the order of
several millimeters, which makes it difficult for the picker to find and select
the tube if it is a few millimeters away from where it is expected to be.” Id.
Independent claim 1 is representative:
1. An apparatus comprising:
a pick head configured to transfer sample containers to and
from a sample group holder;
at least one sensor connected to the pick head and configured to
detect at least one predetermined feature of the sample group
holder; and
a controller configured to
receive a detection signal from the at least one sensor
corresponding to detection of the at least one
predetermined feature,
determine a thermal growth or shrinkage change in a
dimension of a predetermined physical characteristic
intrinsic to the sample group holder based on a detected
position of the at least one predetermined feature, and
determine a location of one or more sample containers in
the sample group holder to allow for the transfer of the
3 Specification, July 23, 2012.
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Application 13/555,957
one or more sample containers to and from the sample
group holder based on the detection signal.
Appeal Br. 51 (emphasis of disputed limitations added). Independent claims
10 and 20 include similar limitations. See id. at 52—53, 55.
The Examiner maintains the following grounds of rejection:4
I. Claims 1, 10, and 20 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Chhatpar.5 See Answer 2-4.
II. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neeper6 in view of Lin.7 See Answer 4—18.
DISCUSSION
Rejection I
The Examiner finds that Chhatpar discloses all the limitations of
claims 1,10, and 20. See Answer 2-4. In particular, the Examiner finds that
Chhatpar discloses a controller configured to “[determine a thermal growth
or shrinkage change in a dimension of a predetermined physical
characteristic intrinsic to the sample group holder based on a detected
position” because “Chhatpar teaches a known/predetermined physical
characteristic that is compared to by a detected change in dimension.” Id. at
3 (citing Chhatpar || 27—28, 32, 34, 36, 38—39, 44, 47—51, 55, Fig. 2 step
204).
4 A rejection of claims 17 and 20 under 35 U.S.C. § 112, second paragraph,
has been withdrawn. See Answer 18.
5 Chhatpar et al., US 2014/0005829 A1 (published Jan. 2, 2014).
6 Neeper et al., US 2008/0044263 Al (published Feb. 21, 2008).
7 Lin et al., US 2003/0111494 Al (published June 19, 2003).
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Appeal 2016-003731
Application 13/555,957
Appellant concedes that Chhatpar discloses calculating a precise
location of a sample rack on a tray or frame. Appeal Br. 8, 20. However,
Appellant argues that Chhatpar does not disclose determining a change in a
dimension of a characteristic that is intrinsic to the sample group holder. See
id. at 12. According to Appellant, the term intrinsic means “belonging to the
real nature of a thing; inherent.” Id. (citing Intrinsic, Webster’s New
World Dictionary and Thesaurus 327 (1996)). Appellant identifies the
length and width of the sample group holder as examples of intrinsic
characteristics. See id.', see also Spec. 39 (describing the calculation of
changes in length and width). Thus, Appellant argues that
[t]he determination of physical/structural change of the sample
group holder is based on and dependent on the properties or na­
ture of what it is that is being determined .... A mere change in
alignment or position, as noted by the Examiner, is clearly not a
dimensional change that is intrinsic to something, rather a change
in alignment or position is a comparative change from one object
relative to another object.
Appeal Br. 13—14. Because Chhatpar only discloses a change in position,
rather than a change in a dimension of an intrinsic physical characteristic of
the sample group holder, Appellant argues that Chhatpar does not disclose
all the limitations of claims 1,10, and 20. See id.
For an anticipation rejection, “every element of the claimed invention
must be identically shown in a single reference.” In re Bond, 910 F.2d 831,
832 (Fed. Cir. 1990). Claims 1,10, and 20 require more than simply the
detection or comparison of feature positions of the sample group holder;
they also require the controller to be configured to determine a change in the
dimension of an intrinsic characteristic. While the Examiner has shown that
the controller disclosed in Chhatpar can calibrate position and rotation
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Appeal 2016-003731
Application 13/555,957
within a set of spatial coordinates, this is not identical to determining a
dimension, such as length or width. Accordingly, the Examiner has not
provided a sufficient factual basis to establish that Chhatpar’s controller is
capable of determining a change in the dimension of a characteristic without
further programming. Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d
1376, 1380 (Fed. Cir. 2011) (discussing Microprocessor Enhancement Corp.
v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008) (explaining that a
prior structure must be capable of performing the recited function without
further programming). Therefore, we reverse the Examiner’s rejection of
claims 1,10, and 20 as being anticipated by Chhatpar.8
Rejection II
The Examiner finds that Neeper teaches elements of the rejected
claims, but does not specifically teach a controller configured to determine a
dimensional change as required by claims 1,10, and 20. See Answer 4—6,
10—12. However, the Examiner finds that Lin teaches using a sensor to
“determine if the sample robotic head is out of position or offset (change in
dimension) with respect to the sample group holder/chip,” using “indexing
marks that are useful in positioning/calibrating the camera relative to its
target/sample holder (determining a relative change in dimension),”
comparing digital images “to show a relative change in position,” taking
8 In the event of further prosecution, the Examiner should consider if the
independent claim 1 is missing an essential step, and specifically, whether
there is a connection between (1) the determination of a thermal growth or
shrinkage change in a dimension of a predetermined physical characteristic
of the sample group holder and (2) the determination of a location of one or
more sample containers in the sample group holder which relies on the
detection signal.
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Appeal 2016-003731
Application 13/555,957
corrective action on misalignment, and that “alignment can be compensated
for by changing the position.” Id. at 23 (citing Lin 13, 28, 119, 124, 128—
30). According to the Examiner, “because Lin teaches the determination of a
change in dimension, the manner in which the dimension changes
(alignment, offset, change in position, thermal shrinkage or growth, etc. . .)
is irrelevant as this language is purely functional modifying the type of
change.” Id.
To establish a prima facie case of obviousness, the Examiner must
provide “some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). Here, as with the rejection based on Chhatpar discussed
above, the Examiner relies on Lin’s teaching of a controller configured to
measure and calibrate positions in space. The Examiner does not identify
any teaching or suggestion in the applied prior art, or establish any other
reason, for why one of ordinary skill in the art would have been led to
determine dimensional changes of a characteristic of the sample group
holder, such as length or width. Thus, the Examiner has not provided a
rationale for why a person of ordinary skill in the art would have made or
used a controller configured to determine a change in a dimension of a
predetermined physical characteristic. Nor has the Examiner provided a
sufficient factual basis to establish that Lin’s controller is capable of
determining a change in the dimension of an intrinsic characteristic without
further programming. See Typhoon Touch, 659 F.3d at 1380.
The Examiner’s rejections of dependent claims 2—9 and 11—19 do not
cure the above error. Therefore, we reverse the Examiner’s rejection of
claims 1—20 under 35 U.S.C. § 103(a).
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Appeal 2016-003731
Application 13/555,957
DECISION
The Examiner’s decision is reversed.
REVERSED
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