Ex Parte Rother et al

Patent Trial and Appeal BoardApr 20, 2015

12151965 (P.T.A.B. Apr. 20, 2015)

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. 12/151,965 05/09/2008 Michael Rother 407-413 2958 2529 7590 04/21/2015 MARK P. STONE 400 Columbus Avenue Valhalla, NY 10595 EXAMINER HAGEMAN, MARK C ART UNIT PAPER NUMBER 3652 MAIL DATE DELIVERY MODE 04/21/2015 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 MICHAEL ROTHER and BERNHARD SPROLL ____________________ Appeal 2013-002762 Application 12/151,965 Technology Center 3600 ____________________ Before LYNNE H. BROWN, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael Rother and Bernhard Sproll (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 19, 20, and 22– 25. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Appeal 2013-002762 Application 12/151,965 2 CLAIMED SUBJECT MATTER Independent claim 19, reproduced below, illustrates the claimed subject matter, with disputed limitations emphasized. 19. Transport vehicle (1) for transporting storage-goods carriers (2) to a storage rack (4, 4') or away from the same, having at least two storage levels (28) for the storage-goods carriers (2) arranged one upon the other, a positioning means (19, 20) which is designed such that it can be aligned with a counter-positioning means (19', 20') which can be assigned to the storage rack (4, 4') and by which the transport vehicle (1) can be positioned in a defined transfer position (U) at the storage rack (4, 4'), wherein in the transfer position (U) the storage goods carriers (2) can be deposited in or withdrawn from their storage levels (29) one after the other, wherein at least one storage level (28) is fixed to the transport vehicle (1) by means of at least one hinge (23) so that it can be tilted. Claims App’x (emphasis added). REJECTIONS 1 Claims 19, 20, 22, 23, and 25 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Tropp (DE 4300682 A1, iss. July 14, 1994) and Upmeyer (EP 1431214 A2, pub. June 23, 2004). Final Act. 3. Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Tropp, Upmeyer, and Yuyama (US 7806644 B2, iss. Oct. 5, 2010). Final Act. 5. 1 The Examiner has withdrawn the rejection of claims 1–17, 20, and 22–25 under 35 U.S.C. § 102(b). Claims 18, 21, and 26–30 have been cancelled. App. Br. 2. Appeal 2013-002762 Application 12/151,965 3 OPINION Tilting Apparatus claims must be structurally distinguishable from the prior art. While features of an apparatus may be recited structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure, rather than function. See In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). However, although claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, to satisfy the functional limitations in an apparatus claim, the prior art apparatus must be capable of performing the claimed function. See Schreiber, 128 F.3d at 1478. Independent claim 19 recites a storage level fixed to a transport vehicle via a hinge “so that [the storage level] can be tilted.” The storage level being tiltable is functional language, and therefore the prior art must be capable of performing the claimed function of allowing the storage level to tilt. Appellants argue that Tropp’s “lagerpunkten” 15 does not allow tilting of its storage levels I, II, because the storage levels I, II are “guided by slidable guides” 5 connecting the storage levels I, II to the lower part of the transport vehicle that “prevent any tilting of the storage level.” Reply Br. 2. We agree with Appellants’ contention that Tropp’s hinge 15 does not render either of its storage levels capable of tilting, and we therefore do not Appeal 2013-002762 Application 12/151,965 4 sustain the rejection of claim 19. Claims 20, 22–25, and 30 depend from claim 19 and we therefore do not sustain the rejections thereof for the reason above. DECISION We REVERSE the rejection of claims 19, 20, 22, 23, and 25 under 35 U.S.C. § 103(a) as unpatentable over Tropp and Upmeyer. We REVERSE the rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable over Tropp, Upmeyer, and Yuyama. REVERSED em