Lutz Rebstock

Patent Trials and Appeals Board

Aug 30, 2021

2020003990 (P.T.A.B. Aug. 30, 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.
12/817,310 06/17/2010 Lutz Rebstock 1229P015331-US(PAR) 5277
106446 7590 08/30/2021
Perman & Green, LLP
99 Hawley Lane
Stratford, CT 06614
EXAMINER
CARRILLO, BIBI SHARIDAN
ART UNIT PAPER NUMBER
1711
MAIL DATE DELIVERY MODE
08/30/2021 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 LUTZ REBSTOCK
____________

Appeal 2020-003990
Application 12/817,310
Technology Center 1700
____________
Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant timely requests1 rehearing under 37 C.F.R. § 41.52 of our
Decision2 affirming the Examiner’s final rejection of claims 7–11, 19–21,
24, 27, 28, and 31–39.
We have considered Appellant’s request (Req. 1–9), and grant
Appellant’s requested relief.

1 Request for Rehearing dated August 16, 2021 (“Req.”).
2 Decision on Appeal dated June 14, 2021 (“Dec.”).
Appeal 2020-003990
Application 12/817,310
2
Each of the independent claims 7 and 21 requires disassembly of an
article “on-the-fly during the article” passing or moving, (i.e., during
movement) from one station to another station. Independent claim 24
requires unlocking multiple portions of an article which are locked
“coincident with the article moving from the first station to the second
station.” Thus, each of the claims on appeal require disassembly or locking
of an article during movement.
In our Decision, we understood one of Appellant’s arguments on
appeal to be one of “a direct substitution of Miyamoto’s robot into AAPA’s
method” 3 and were unpersuaded by that argument. Dec. 5–6. On rehearing,
Appellant’s argument is better developed and we now consider it persuasive.
Specifically, Appellant argues on rehearing that “the Examiner’s
rejection . . . hinges on teaching of a single robot performing each of the
carrying, placing, and particularly assembly/disassembly functions (i.e.,
multiple dissimilar functions),” but that Miyamoto’s robot is not capable of
carrying out such “multiple dissimilar functions.” Req. 2; see also id. at 3
(where Appellant identifies such “dissimilar” functions as “carrying and
disassembling”). Appellant argues that “[t]he Examiner has not shown how
or why the robot in Miyamoto (that performs the ‘multiple’ functions of
picking/ placing items) evinces a robot having [] multiple dissimilar
functions (i.e. picking/placing and disassembly/assembly coincident with
moving of the article).” Id.

3 On appeal, Appellant argued “[t]here is simply nothing in Miyamoto that
would lead one skilled in the art to modify or replace the basic articulated
robot 3 of Miyamoto as suggested by the Examiner.” Appeal Br. 11.
Appeal 2020-003990
Application 12/817,310
3
Consulting Miyamoto––a machine translation from Japanese into
English––it is not clear whether Miyamoto’s robot4 performs the “carry”
(i.e., moving) and “separation,” (i.e., disassembly) steps recited in claims 7
and 21, or whether pod placing part 2 performs the separation step. See,
e.g., Miyamoto ¶ 52 (“It is effective in the ability of a robot to perform
separation or assembly operation automatically by the one aforementioned
pod placing part by having the composition which provides the robot which
performs separation, an assembly, or a carry process” (emphasis added));
see also id. ¶ 16 (“separation or assembly operation of the aforementioned
pod can be performed by a pod placing part”). Even interpreting
Miyamoto’s singular robot as being capable of carrying and separating an
article, the Examiner has not sufficiently identified disclosure within the
prior art that would apprise the skilled artisan of how Miyamoto’s single
robot alone could, e.g., “disassemble[] the multiple portions of the article on-
the-fly during the article moving from the first station to a second station”
(claim 21). The Examiner’s rejection of claim 24 suffers from a similar
deficiency with respect to locking an article during movement. Final Act. 6–
10; Ans. 7–8.
For these reasons, we grant Appellant’s rehearing request.
CONCLUSION
Appellant’s Request is granted.

4 While the Examiner does not specifically identify “robot 3” in the
rejection, the only robot referenced in Miyamoto’s paragraph 27 cited by the
Examiner is “robot 3.” Final Act. 5; Miyamoto ¶ 27.
Appeal 2020-003990
Application 12/817,310
4
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Reference(s)/Basis Denied Granted
7–11, 19–
21, 24, 27,
28, 31–39
103(a) AAPA, Miyamoto,
Barker
7–11, 19–
21, 24, 27,
28, 31–39

Final Outcome of Appeal after Rehearing:
Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7–11, 19–
21, 24, 27,
28, 31–39
103(a) AAPA, Miyamoto,
Barker
7–11, 19–
21, 24, 27,
28, 31–39

GRANTED