DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections – 35 U.S.C. § 103
This application currently names joint inventors. In considering patentability of the claims, the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 C.F.R. § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Miura
Claims 1-2 and 6 are rejected under 35 U.S.C. § 103 as being unpatentable over US 5427222 A (“Miura”).
Regarding claim 1, Miura discloses a configurable tray for robot workpiece handling (Fig. 1, tray 1 for holding articles P that can be picked up by a robot hand 14d; Examiner notes that this preamble includes a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (“It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.”); MPEP § 2111.02(II)), comprising:
a frame including a plurality of frame segments arranged in a rectangle, the plurality of frame segments including a first pair of opposed frame segments and a second pair of opposed frame segments (Figs. 1-3, frame (top portion of element 2) including frame segments 8 arranged in a rectangle, with a first and second pair of opposed frame segments),
each of the plurality of frame segments including a plurality of positioning features spaced evenly along an inner edge of the frame segment (Figs. 1-3; 5:53-66, frame segments with evenly spaced positioning features 8d (notches at spacing X1) on inner edge; Examiner notes that the term “positioning features”, does not invoke interpretation under § 112(f), as the term is known by one skilled in the art and denotes a very broad range of structures that includes holes, notches, markings, and protrusions);
a plurality of separation bars (Figs. 1-2, bars 6a and 6b),
each separation bar including a first end and a second end (Figs. 1-3, bars 6a and 6b having opposite ends);
wherein the plurality of separation bars are configured to be positioned to define one or more configurable grid patterns of pockets for receiving a workpiece by selectively positioning a first number of the plurality of separation bars between a first number of positioning features of the first pair of opposed frame segments and selectively positioning a second number of the plurality of separation bars overlapping the first number of the plurality of separation bars between a second number of positioning features of the second pair of opposed frame segments, the first pair of opposed frame segments being perpendicular to the second pair of opposed frame segments (Figs. 1-3, bars 6a and 6b are capable of being selectively positioned in positioning features 8d of frame segments 8 on opposite sides of frame (top portion of element 2) to define a grid pattern of pockets for receiving a workpiece P, where bars 6a overlap bars 6b, and where frame segments 8 for bars 6a is perpendicular to frame segments 8 for bars 6b),
and a base attached to the frame and including a pair of end plates and a plurality of inner plates; wherein the pair of end plates and the plurality of inner plates are configured to interlock to form the base (Figs. 1-3, frame (top portion of element 2) is attached to base 4 by the remainder of element 2, base including end plates and inner plates interlocking (i.e., they connect together) to form the base (see annotated Fig. 2 below); Examiner interprets the horizontal dashed line separating elements 4a from 4b (Fig. 2) to indicate separate inner plate parts).
[AltContent: arrow][AltContent: textbox (Base)][AltContent: arrow][AltContent: textbox (Inner plates (4a and 4b))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (End plate (lower part of 2))][AltContent: textbox (End plate (lower part of 2))][AltContent: rect][AltContent: textbox (Frame)][AltContent: arrow]
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Miura Fig. 2 (annotated)
To the extent Miura does not explicitly disclose a plurality of inner plates (e.g., because they are part of a single structure, elements 4a and 4b), Miura makes obvious this claim. It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify Miura to employ a base construction that uses separate inner plates (elements 4a and 4b), separated as shown by the dashed line in Fig. 2. This would have been obvious because forming the inner plates 4a and 4b separately, and then putting them together to interlock, allows for an easier and cheaper Styrofoam manufacturing process (e.g., simple pieces 4a, 4b are formed, and then connected, compared to forming a single, more complex piece of foam) (Miura 5:7-26, element 4 and its sub-elements are made from a soft material such as Styrofoam). This modification also allows for customization of the corresponding pocket (e.g., replacing element 4b with a different shape to accommodate a different object, while retaining the use of element 4a). Examiner notes that Applicant states no novel or unexpected result due to having a plurality of inner plates (as opposed to a single, larger inner plate), other than the ordinary result of modularity and part uniformity (Spec. ¶ 0045). In re Dulberg, 289 F.2d 522, 523 (CCPA 1961) (“If it were considered desirable for any reason to obtain access to the end of Peterson’s holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”); MPEP § 2144.04(V)(C).
Regarding claim 2, Miura makes obvious the configurable tray of claim 1 as applied above. Miura further discloses wherein each of the plurality of positioning features includes a notch disposed between adjacent protrusions formed along the inner edge of the frame segment (Figs. 1-3, frame segment 8 has notches 8d between adjacent protrusions on the inner edge).
Regarding claim 6, Miura makes obvious the configurable tray of claim 1 as applied above. Miura further discloses wherein the plurality of frame segments includes a pair of side segments and a pair of end segments (Figs. 1-3, a pair of opposing frame segments 8 are the “side segments”, and a pair of opposing frame segments 8, oriented perpendicularly from the “side segments”, are the “end segments”).
Miura in view of Wesling
Claims 8-9 and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over US 5427222 A (“Miura”) in view of US 2702647 A (“Wesling”).
Miura pertains to a storage and delivery container (Abstr.; Fig. 1). Wesling pertains to a material handling tray (Fig. 1; 1:15-21). These references are in the same field of endeavor.
Regarding claim 8, Miura makes obvious the configurable tray of claim 1 as applied above. Miura does not explicitly disclose a pair of locking plates, each locking plate being attached to one of the plurality of frame segments and including an inner portion that overlaps the ends of the second number of the plurality of separation bars to clamp the plurality of separation bars in place. However, the Miura/Wesling combination makes obvious this claim.
Wesling discloses:
a pair of locking plates (Figs. 1, 2, 5, locking plates 23/24),
each locking plate being attached to one of the plurality of frame segments and including an inner portion that overlaps the ends of the second number of the plurality of separation bars to clamp the plurality of separation bars in place (Figs. 1, 2, 5, locking plates 23/24 attached to frame segments 11, with inner portions overlapping bars 21; 3:18-22, “After the required number of rods have been arranged in the frame in accordance with the compartment requirements, their displacement may be readily avoided by securing onto the top edges of the sides 11 strips 23 and 24”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Wesling with Miura by adding locking plates as taught by Wesling because this would prevent the Miura bars 6a/6b from displacing during transport of the device 1 (Wesling 3:18-22, “After the required number of rods have been arranged in the frame in accordance with the compartment requirements, their displacement may be readily avoided by securing onto the top edges of the sides 11 strips 23 and 24”).
Regarding claim 9, the Miura/Wesling combination makes obvious the configurable tray of claim 8 as applied above. Miura and Wesling do not explicitly disclose wherein the plurality of frame segments, the plurality of separation bars, the pair of end plates, the plurality of inner plates, and the pair of locking plates are substantially the same length.
Nevertheless, it would have been obvious to one of ordinary skill in the art before the effective filing date of this application to modify the plurality of frame segments, the plurality of separation bars, the pair of end plates, the plurality of inner plates, and the pair of locking plates to have substantially the same length because it is a matter of design choice. For instance, modifying the device 1 of Miura to a square container instead of a rectangular one would result in the claimed elements having substantially the same length. The specification and evidence of record fail to attribute any significance (novel or unexpected results) to these claimed elements having substantially the same length, other than the ordinary result of them being the same size and being able to be packaged together when disassembled (Spec. ¶ 00046). Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1345 (Fed. Cir. 1984) (the claimed device was not patentably distinct from the prior art device based on a difference in dimensions because it would perform no differently than the prior art device); MPEP § 2144.04(IV)(A).
Examiner notes that the definition of “substantially” includes “to a large degree”. The specification (Spec. ¶ 000045) and the drawings (Spec. Figs. 7-9) do not explicitly state any particular dimensional range that would satisfy the limitation “substantially the same length” (e.g., +/- 5mm). Nevertheless, Examiner interprets this limitation broadly (and not as indefinite), recognizing that there may be some dimensional variation between persons of ordinary skill in the art of what would satisfy “substantially the same length” in the context of this invention and field of art.
Regarding claim 26, Miura makes obvious the configurable tray of claim 1 as applied above. Miura does not explicitly disclose wherein the first number of the plurality of separation bars lies in a first plane and the second number of the plurality of separation bars lies in a second plane above the first plane. However, the Miura/Wesling combination makes obvious this claim.
Wesling discloses wherein the first number of the plurality of separation bars lies in a first plane and the second number of the plurality of separation bars lies in a second plane above the first plane (Figs. 1-5, longitudinal bars 21 lie in a different plane(s) from transverse bars 22 (above and/or below)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Wesling with Miura by using a plurality of slimmer bars (Wesling bars 21/22, using multiple layers of longitudinal and transverse bars as needed) in place of the Miura bars 6a and 6b, which extend the entire height of the tray, because this would save weight and material. The Wesling bars 21/22 are capable of partitioning the tray as well as Miura, preventing undesired movement of the contents therein, without the added weight and material of bars that unnecessarily extend the entire height of the tray (Wesling 2:62-64, “The frame described hereinabove is readily adapted to be divided into compartments of various sizes to accommodate miscellaneous articles”).
Miura in view of Cheng
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over US 5427222 A (“Miura”) in view of US 20040144789 A1 (“Cheng”).
Miura pertains to a storage and delivery container (Abstr.; Fig. 1). Cheng pertains to a storage container (Abstr.; Fig. 4). These references are in the same field of endeavor.
Regarding claim 7, Miura makes obvious the configurable tray of claim 6 as applied above. Miura does not explicitly disclose wherein each of the pair of side segments includes a first end forming a first notch and a second end forming a second notch, and each of the pair of end segments includes a first end forming a first tab and a second end forming a second tab, the first notches being configured to mate with the first tabs and the second notches being configured to mate with the second tabs, thereby connecting the pair of side segments to the pair of end segments to form the frame. However, the Miura/Cheng combination makes obvious this claim.
Cheng discloses:
wherein each of the pair of side segments includes a first end forming a first notch and a second end forming a second notch (Figs. 2, 3, side segments 14 have first and second notches 42 at first and second ends),
and each of the pair of end segments includes a first end forming a first tab and a second end forming a second tab (Figs. 2, 3, end segments 16 have first and second tabs 62 at first and second ends),
the first notches being configured to mate with the first tabs and the second notches being configured to mate with the second tabs, thereby connecting the pair of side segments to the pair of end segments to form the frame (Figs. 2, 3, the first notches mate with the first tabs, and the second notches mate with the second tabs, connecting the pair of side segments to the pair of end segments).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Cheng with Miura by modifying the side segments and end segments to have the interconnecting notch and tab features as taught by Cheng because this configuration provides for a more stable construction than having separate side and end segments that do not interconnect (Cheng ¶ 0005, “However, the slat bodies 91 [of the prior art (Fig. 1)] are simply placed along the inner edges of the receptacle 93 to form a rectangular structure. The four corners of the rectangular structure are not interconnected. Therefore, the rectangular structure is unstable and cannot be reliably located. Moreover, in use, it often takes place that one or two or all the slat bodies 91 of the unstable structure fall down. This leads to trouble in use of such partitioning plate.”). Further, the Cheng design allows the frame (top portion of element 2) to not require features near the four corners to secure the frame segments 8, and allow the frame segments 8 to extend to the four corners to allow for more grooves 8d, which would increase the customizability of the device using the bars 6a/6b.
Miura in view of Umstead
Claims 10-11 are rejected under 35 U.S.C. § 103 as being unpatentable over US 5427222 A (“Miura”) in view of US 20180125232 A1 (“Umstead”).
Miura pertains to a storage and delivery container (Abstr.; Fig. 1). Umstead pertains to a storage shelving assembly (Abstr.; Fig. 3). These references are in the same field of endeavor.
Regarding claim 10, Miura makes obvious the configurable tray of claim 1 as applied above. Miura does not explicitly disclose a plurality of height adjustment brackets and a plurality of clips, wherein each height adjustment bracket is positioned adjacent a corner of the frame and includes a plurality of horizontal slots, and each of the plurality of clips is configured to extend through at least one of the plurality of horizontal slots and clip onto one of the plurality of frame segments, thereby supporting the frame at a selectable height above a support surface. However, the Miura/Umstead combination makes obvious this claim.
Umstead discloses:
a plurality of height adjustment brackets and a plurality of clips (Figs. 1-3, 5-6, bracket 12, clips 16; see discussion below re “a plurality of height adjustment brackets”),
wherein each height adjustment bracket is positioned adjacent a corner of the frame and includes a plurality of horizontal slots (Figs. 1-3, 5-6, bracket 12 has horizontal slots 44 and 48/50, and is positioned adjacent the corner of frame 14),
and each of the plurality of clips is configured to extend through at least one of the plurality of horizontal slots and clip onto one of the plurality of frame segments, thereby supporting the frame at a selectable height above a support surface (Figs. 1-3, 5-6, each clip 16 extends through at least one of horizontal slots 44 and 48/50 to clip onto a frame segment of frame 14 to support frame 14 above a support surface (e.g., the base of device 10)).
It would have been obvious to one of ordinary skill in the art before the effective filing date of this application to combine the teachings of Umstead with Miura by adding the height adjustment brackets and clips of Umstead to adjustably support the frame (top portion of element 2) of Miura, such as adding brackets to opposite sides of Miura element 2 (Umstead Fig. 3 shows one bracket 12 having two sets of slots for height adjustment; see US 6279744 B1 (“Yu”) Figs. 1, 4, height adjustment brackets 12 located on opposite sides of element 11, located adjacent to the corners of frame 20 for height adjustment). This would have been obvious because it would allow the Miura device to be customizable to hold objects of different heights (e.g., shorter objects) without having to design and manufacture unique parts for the various object heights. Thus, this modification allows for configurability in all three axes (in addition to the configurability to accommodate objects of different widths and lengths) (Miura 5:53-66, “This makes it possible to change the partitioning spacing”). Further, with this modification, the parts of the Miura (e.g., Miura frame segments 8, bars 6a/6b) could be reused to accommodate objects of different heights,
Regarding claim 11, the Miura/Umstead combination makes obvious the configurable tray of claim 10 as applied above. Umstead further discloses wherein each of the plurality of height adjustment brackets includes a mounting plate configured to attach to the support surface and an upright plate including the plurality of horizontal slots (Figs. 1, 3, bracket 12 has a bottom portion (“mounting plate”) that attaches to the base of device 10, and an upper portion (“upright plate”) that includes the horizontal slots).
The obviousness rationale for claim 11 is the same as for claim 10.
Allowable Subject Matter
Claim 27 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The reasons for allowance remain the same as those stated in the 10/16/2025 Office Action.
As allowable subject matter has been indicated, Applicant’s reply must either comply with all formal requirements or specifically traverse each requirement not complied with. 37 C.F.R. § 1.111(b) and MPEP § 707.07(a).
Response to Amendment
Applicant’s Amendment and remarks have been considered. Claims 3-5 have been canceled. Claims 1-2 and 6-27 are pending. Claims 12-25 have been withdrawn from further consideration under 37 C.F.R. § 1.142(b) as being drawn to a nonelected invention. Claims 1-2, 6-11, and 26-27 are rejected.
Claims – In light of Applicant’s claim amendments, the § 112(b) rejection of claim 9 is hereby withdrawn. Upon reconsideration, the § 112(a) rejection of claim 27 is hereby withdrawn. Examiner notes that while claim 27 has written description support (e.g., Spec. Figs. 9-10) for the limitation “a first side edge with at least one first tab and at least one first notch, and a second side edge with at least one second tab and at least one second notch” because the specification discloses a configuration where the first side edge and the second side edge each have one tab and one notch (Spec. Figs. 9-10), Applicant would not have written description support if it were to claim a configuration such as “a first side edge with two tabs and two notches, and a second side edge with two tabs and two notches”.
Response to Arguments
Applicant’s arguments have been fully considered. Applicant’s arguments regarding claim 1 are not persuasive. To the extent Miura does not explicitly meet the “plurality of inner plates” limitation, it is Examiner’s position that the obviousness rationale provided in claim 1 regarding modifying Miura’s alleged one-piece base to instead be made of multiple, interlocking pieces is sufficient for a prima facie finding of obviousness under 35 U.S.C. § 103.
Applicant makes several arguments to explain why the proposed modification of Miura would be improper (Reply at 12-13). These arguments are not persuasive because Applicant relies on an incorrect understanding of obviousness under 35 U.S.C. § 103. The obviousness analysis cannot be confined by a formalistic conception of the words teaching, suggestion, and motivation, or by overemphasis on the explicit content of the cited references. The question is not whether a combination was obvious to the inventor or Applicant but whether the combination was obvious to a person of ordinary skill in the art before the effective filing date of the application. Applicant’s arguments fail because Applicant confounds the question of obviousness and neglects the KSR standard for a person of ordinary skill, which is “a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Under the correct analysis, any need or problem known in the field of endeavor at that time and addressed by the application can provide a reason for combining the elements in the manner claimed. KSR, 550 U.S. at 420-21; MPEP § 2145(X)(C). There is no requirement under KSR for the prior art to explicitly state an exact technique for obtaining a result if a person of ordinary skill could ascertain how the result could be accomplished based on the prior art in combination with the person’s logic, judgment, and common sense. Id. at 418 (“the 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”); Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“an analysis of obviousness...also may include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion”).
Applicant argues that it would not be obvious to make one object (Miura’s base) from multiple interlocking objects (Reply at 12-13). But Applicant also insists that this is “an invention in arguably the most predictable of art fields” (Reply at 8), which Examiner agrees with. The concept of modularity and using multiple same pieces to make a single piece (and vice-versa) is not novel or unexpected. See e.g., In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced”); MPEP § 2144.04(VI)(B); see also, In re Larson, 340 F.2d 965, 968 (CCPA 1965) (“the use of a one piece construction instead of the structure disclosed [several parts secured as a single unit] would be merely a matter of obvious engineering choice”); MPEP § 2144.04(V)(B).
Importantly, the concept of modularity in the field of trays and boxes is known. Miura teaches the concept of modularity with respect to the upper support inserts 8 that fit in the upper portion of box 2, where the upper support inserts 8 could be swapped for other inserts 8 that have a different partitioning configuration (Miura 5:53-6:4; Fig. 3, compare the 4x2 grooved inserts 8 having pitch X1 with the 5x3 grooved inserts 8 having pitch X2). Note that the partitioning members 6a, 6b are also modular because a different quantity would be used to match the desired partitioning configuration. Critically, note that for each different partitioning configuration, the configuration of the base (elements 2 and 4a-e) would have to change to accommodate the number and pitch of the partitioning members 6a, 6b. This problem would be solved with the proposed modification, as set forth in the claim 1 discussion above, that allows for customization using modular elements.
And as previously stated, Applicant’s interpretation of “interlocking” is narrower than its plain and ordinary meaning (Reply at 13). That is, Applicant appears to interpret “interlocking” as requiring a mechanical interference fit or lock. But other methods (such as adhesive) used to attach elements 4a with 4b would suffice (even if elements 4a and 4b merely rest on top of one another) to meet the definition of “interlocking,” which is “to lock together” (“Interlock”, Merriam-Webster Online Dictionary, https://www.merriam-webster.com/dictionary/interlock, retrieved 03/06/2026). Examiner notes that it is well known to use adhesive in the construction of foam packaging materials, applying layers on top of other layers (using adhesive for attachment) in order to achieve the desired complex geometry to protect the packaged product.
Accordingly, Applicant’s emphasis on modularity and part uniformity is misguided. And the fact that the modularity of the claimed invention results in a product that could be efficiently bundled together in a small, densely packed shipping container is a run-of-the-mill result, not a novel or unexpected result. In re Dulberg, 289 F.2d 522, 523 (CCPA 1961); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). Actual evidence of secondary considerations (e.g., commercial success, long felt need, failure of others, skepticism of others, copying) would be required for further consideration. MPEP § 2145; see MPEP §§ 716.01-06. It should be noted that attorney argument cannot take the place of actual evidence. MPEP §§ 716.01(c)(I)-(II).
Conclusion
THIS ACTION IS MADE FINAL. MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENT N SHUM whose telephone number is (703)756-1435. The examiner can normally be reached 1230-2230 EASTERN TIME M-TH.
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/KENT N SHUM/Examiner, Art Unit 3723
/MONICA S CARTER/Supervisory Patent Examiner, Art Unit 3723