Ex Parte Lert et al

Patent Trial and Appeal Board

Jun 30, 2016

12757354 (P.T.A.B. Jun. 30, 2016)

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
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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.
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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.
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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
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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
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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
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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
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