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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-20, drawn to “A precision apparatus” or to “A precision system”, depending upon the claim) in the reply filed on 11/4/2025 was previously acknowledged.
Claims 21-23 were previously withdrawn (and still are) from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/4/2025.
Drawings
The drawings were received on 4/20/2026. These drawings are acceptable.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“at least one form-fitting centering element, which is configured to interact with the centering bolt or the centering recess for the submillimeter-precise horizontal orientation of the at least one holding unit” in claim 1;
“at least one further form-fitting centering element, which is configured to interact with a further centering bolt or with a further centering recess for the submillimeter-precise horizontal orientation of the at least one holding unit” in claim 2;
“a position-fixing element for the tool chucks” in claim 9;
“a further form-fitting centering element of each of the holding units of the plurality of precision devices for placement into storage or removal from storage respectively” in claim 16;
“a holding unit identifying device…which is configured for an identification of individual holding units from the holding units of the plurality of precision devices for placement into storage or removal of the storage lift” in claim 20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 1 is objected to because of the following informalities: On line 11 of the claim, “the” should be inserted before “tools” and also before “tool chucks”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On lines 14-15 of the claim, “a handling robot” should be changed to “[[a]] the handling robot”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On lines 19-20 of the claim, “the” should be inserted before “tools” and also before “tool chucks”. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: On line 22 of the claim, “the holding units” should be changed to “the at least one holding unit”. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: On lines 2-3 of the claim, “at least one of the storage bins of the plurality of storage bins” should be changed to “at least one . Appropriate correction is required.
Claim 14 is objected to because of the following informalities: On each of lines 2 and 3 of the claim, each instance of “the centering device” should be changed to “the at least one centering device”. Appropriate correction is required.
Claim 15 is objected to because of the following informalities: On each of lines 2 and 3 of the claim, each instance of “the centering device” should be changed to “the at least one centering device”. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: On lines 4-5 of the claim, “the holding units” should be changed to “the at least one holding unit”. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: On lines 7-8 of the claim, each instance of “the centering device” should be changed to “the at least one centering device”. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: On line 4 of the claim, “/ holding units” should be changed to “[[/]] the at least one holding unit”. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: On line 5 of the claim, “the holding unit” should be changed to “the at least one holding unit”. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: On line 4 of the claim, “from the holding units” should be changed to “from the at least one holding unit”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-12 and 14-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Lines 1-5 of claim 1 state, “A precision system for placement into storage and/or removal from storage of tools or tool chucks, having a handling robot for loading of a storage lift with the tools or the tool chucks, the storage lift comprising a plurality of precision devices…” This limitation is viewed to be vague and indefinite, because it is unclear if the precision system is being set forth by Applicant as “having” both the “handing robot” and “storage lift” or just the “handling robot,” for example. Please note that Applicant sets forth the handling robot as having an intended use of “for loading of a storage lift,” but doesn’t make clear whether or not the storage lift is an element of the precision system to which amended claim 1 is directed. Examiner suggests the following amendment to lines 1-5 so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “A precision system for placement into storage and/or removal from storage of tools or tool chucks, the precision system comprising: a storage lift; and a handling robot for loading of [[a]] the storage lift with the tools or the tool chucks, the storage lift comprising: a plurality of precision devices…” Note that for the sake of uniformity Examiner also suggests the following amendment to lines 19-20 of claim 1: “the precision system…further comprising:”
Lines 9-12 of claim 1 state, “wherein the precision devices for the placement into storage or removal from storage of the plurality of precisions devices for the placement into storage or removal from storage in each case having at least one holding unit for tools or tool chucks.” This limitation is viewed to be vague and indefinite, because due to the repetition, it is unclear as to what is meant by “the precision devices for the placement into storage or removal from storage of the plurality of precisions devise for the placement into storage or removal from storage.” Examiner suggests the following amendment so as to overcome this particular rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph: “wherein each of the plurality of precisions devices for placement into storage or removal from storage has at least one holding unit for the tools or the tool chucks.”
Lines 2-3 of claim 11 state, “the at least one holding unit is supported on the base plate in a floating manner.” This limitation is viewed to be vague and indefinite, because it is unclear as to what is meant by the base plate supporting the at least one holding unit “in a floating manner.” If the base plate supports the at least one holding unit from below, for example, how is it that the at least one holding unit is supported “in a floating manner”? If the base plate does not support the at least one holding unit from below, how or in what way is the at least one holding unit supported “in a floating manner”? Is the at least one holding unit, for example, supported from above or is the at least one holding unit cantilevered in some manner?
Lines 1-3 of claim 16 state, “The precision system for placement into storage or removal from storage according to claim 1, comprising a further centering device with a further centering bolt or with a further centering recess.” This limitation is viewed to be vague and indefinite, because it is unclear if the “further centering device” of claim 16 is part of the “at least one centering device” of line 20 of claim 1 (noting that claim 16 directly depends on claim 1), or if the “further centering device” of claim 16 is provided in addition to, for example, the “at least one centering device” of line 20 of claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 9-11, and 14-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obrist (U.S. Patent No. 5,242,359 A).
Please be advised that Obrist was cited by Applicant on the IDS filed on 2/22/2023.
Claim 1: Figure 14 of Obrist show a precision system for placement into storage (1) and/or removal from storage (1) of tools [column 4, line 60].
Figure 14 of Obrist also shows the precision system as comprising a handling robot (76) for loading of a storage lift (84) with the tools. The handling robot (76) providing the tools to at least one holding unit (2) of one of a plurality of precision devices (2, 9), and the one of the plurality of precision devices (2, 9) subsequently being moved into the storage lift (84) after having been loaded by the handling robot (76), for example, results in the handing robot (76) having carried out the intended use of “for loading of the storage lift with the tools.” (It is noted that claim 1 doesn’t limit as to how or what way that the claimed handling robot carries out the claimed intended use of “for loading of a storage lift with the tools or the tool chucks”).
As can be seen in Figure 14, the precision system comprises the storage lift (84) which in turn comprises the plurality of precision devices (2, 9) for placement into the storage (1) or removal from the storage (1) that are configured for an automated placement into the storage (1) or removal from the storage (1) of the tools into or out of the storage lift (84). It is noted that Figure 14 of Obrist shows two conveyor systems (87, 88) on each of which the plurality of precision devices (2, 9) is configured to incur placement. It is through actuation of these two conveyor systems (87, 88) that a selected one of the plurality of precision devices (2, 9) (and the tools held therein) incur automated placement into or out of the storage (1) and into or out of the storage lift (84).
Also, as can be seen within each of Figures 1-5, each of the plurality of precision devices (2, 9) is provided with at least one holding unit (2) for the tools.
Next, as can be seen in at least Figure 14, the at least one holding unit (2) of each of the plurality of precision devices (2, 9) for placement into the storage (1) or removal from the storage (1) is loadable by the handling robot (76) [column 6, lines 1-6].
Attention is now directed to Figure 4, which shows the at least one holding unit (2) as forming a plurality of storage bins (4, 8) for the tools. Since each holding unit (2) has the same configuration, the at least one holding unit (2) of each of the plurality of precision devices (2, 9) for placement into the storage (1) or removal from the storage (1) respectively forms a plurality of storage bins (4, 8) for the tools.
The precision system further comprises at least one centering device, comprising an automatedly movable centering recess (27) for a submillimeter-precise horizontal orientation of the at least one holding unit (2) of the selected one of the plurality of precision devices (2, 9) at a given time. Please be advised that is achieved by generating a form-fit connection of the centering recess (27) (which is a conic center hole) [column 5, line 45] with at least one form-fitting centering element (13). Note that the at least one form-fitting centering element (13) is embodied as a centering cone [column 5, line 63] and is an element of the at least one holding unit (2). It is also noted that this form-fit connection can be established between the centering recess (27) and each of the plurality of precision devices (2, 9). However, only one of the plurality of precision devices (2, 9) is able to be centered in the storage (1) at a given time. Moreover, be advised the centering recess (27) is “automatedly movable” by means of a pressurized working cylinder (28) (see Figure 1 of Obrist) [column 5, lines 47-65].
Next, be advised that lines 25-26 of claim 1 set forth therein, “at least one form-fitting centering element.” Noting this, “at least one form-fitting centering element” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that “at least one form-fitting centering element” is interpreted as comprising the structure disclosed on page 16, lines 8-16 of Applicant's specification filed on 4/20/2026, as well as equivalents thereto.
With respect to the prior art and Obrist, Figure 1 shows the at least one holding unit (2) as comprising a centering cone (13) [column 5, line 63], which as can be seen in Figure 1 of Obrist, interacts with the centering recess (27) for the submillimeter-precise horizontal orientation of the at least one holding unit (2). As such, the centering cone (13) of Obrist constitutes an equivalent of the “at least one form-fitting centering element.” This is because the centering cone (13) of Obrist carries out the function that is specified in lines 27-28 of claim 1, said function being “interact with…the centering recess.” Also, the centering cone (13) isn't excluded by any explicit definition provided in Applicant's specification, and the centering cone (13) produces substantially the same result as the corresponding “at least one form-fitting centering element (26)” of Applicant. Based on the foregoing, the centering cone (13) will hereinafter be referred to by Examiner as “the at least one form-fitting centering element (13).”
Thus, the at least one holding unit (2) of each of the plurality of precision devices (2, 9) of Obrist comprises the at least one form-fitting centering element (13), which is configured to interact with the centering recess (27) for the submillimeter-precise horizontal orientation of the at least one holding unit (2).
Claim 2: Be advised that line 3 of claim 2 sets forth therein, “at least one further form-fitting centering element.” Noting this, “at least one further form-fitting centering element” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that “at least one further form-fitting centering element” is interpreted as comprising the structure disclosed on page 16, lines 8-16 of Applicant's specification filed on 4/20/2026, as well as equivalents thereto, noting that the “at least one further form-fitting centering element” is (per Applicant) implemented approximately identically to Applicant’s form-fitting centering element, or implemented differently, or complementary to the form-fitting centering element [see page 4, lines 20-24].
With respect to the prior art and Obrist, Figure 4 shows the at least one holding unit (2) as further comprising a lower centering element (embodied as a vertically-orientated projection), which as can be seen in Figure 4, interacts with a further centering recess that is formed within a hub (10) for the submillimeter-precise horizontal orientation of the at least one holding unit (2). As such, the lower centering element of Obrist constitutes an equivalent of the “at least one further form-fitting centering element.” This is because the lower centering element of Obrist carries out the function that is specified in line 4 of claim 2, said function being “interact with a…further centering recess.” Also, the lower centering element of Obrist isn't excluded by any explicit definition provided in Applicant's specification, and the lower centering element produces substantially the same result as the corresponding “further form-fitting centering element (30)” of Applicant. Based on the foregoing, the lower centering element will hereinafter be referred to as “the at least one further form-fitting centering element.” Thus, the at least one holding unit (2) of Obrist comprises the at least one further form-fitting centering element, which is configured to interact with the further centering recess of the hub (10) for the submillimeter-precise horizontal orientation of the at least one holding unit (2).
Claim 3: As can be seen in Figures 1 and 4, the at least one form-fitting centering element (13) and the at least one further form-fitting centering element are arranged in end regions of the at least one holding unit (2) which, for example, when viewed along a main extension direction of the at least one holding unit (2), are situated opposite each other.
Claim 9: Please be advised that lines 3 of claim 9 sets forth therein, “a position-fixing element.” Noting this, “a position-fixing element” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Be advised that “a position-fixing element” is interpreted as comprising the structure disclosed on page 6, lines 23-26 of Applicant's specification filed on 4/20/2026, as well as equivalents thereto.
With respect to the prior art and Obrist, Figure 3 shows a storage bin (4, 8) of the at least one holding unit (2) as comprising a disk magazine/bearer (4) and a plurality of storage places (6). Please be advised that each storage place (6) has a radial incision (7) [column 5, lines 1-3]. Note that each radial incision (7) corresponds in structure to “a position-fixing element” of Applicant, noting that each radial incision (7) is itself a recess, and per Applicant, “a position-fixing element” is realized as a recess (pages 6, line 25 – page 7, line 2 of Applicant's specification). Thus, each respective radial incision (7) of the plurality of storage places (6) constitutes a respective “position-fixing element [7]” and will thus be referred to as such. Based on the foregoing, at least one of the storage bins (4, 8) of the plurality of storage bins (4, 8) comprises a position-fixing element (7). Please note that each position-fixing element (7) of Obrist can be used for the intended use of “for tool chucks” simply by providing such tool chucks and storing, for example, each provided tool chuck within a corresponding position-fixing element (7) of Obrist.
Claim 10: The precision device (2, 9) of Obrist that is shown in at least Figure 4 comprises a planar base plate (9) carrying the at least one holding unit (2). Please be advised that said planar base plate (9) provides for horizontal displacement of the at least one holding unit (2) along rollers (40) of a conveyor system (see Figure 3, for example) [column 6, lines 33-42].
Claim 11: As can be seen in Figure 4, the at least one holding unit (2) is supported on the planar base plate (9) in a floating manner by a lower centering element of the rotating support (3) of the at least one holding unit (2), wherein the lower centering element interacts with, for example, a further centering recess that is formed within a hub (10).
Claim 14: The centering recess (27) of the at least one centering device has a conical inner shape as it is a conic center hole [Obrist, column 5, line 45] (see Figure 1 of Obrist).
Claim 15: The centering recess (27) of the at least one centering device is automatedly movable along a vertical direction by means of the pressurized working cylinder (28) (please see Figure 1 of Obrist) [Obrist, column 5, lines 47-65].
Claim 16: At least Figures 1 and 5-7 of Obrist show therein the precision system as further comprising a further centering device with a further centering bolt (21), which is configured for a form-fitting interaction.
Next, be advised that line 4 of claim 16 sets forth therein, “a further form-fitting centering element.” Noting this, “a further form-fitting centering element” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that “a further form-fitting centering element” is being interpreted as comprising the structure disclosed on page 16, lines 8-16 of Applicant's specification filed on 4/20/2026, as well as equivalents thereto, noting that the “further form-fitting centering element” is (per Applicant) implemented approximately identically to Applicant’s form-fitting centering element, or implemented differently, or complementary to the form-fitting centering element [see page 4, lines 20-24].
Regarding the prior art and Obrist, Figures 1 and 4 shows the at least one holding unit (2) as further comprising a hub (10) with a recess (12) interfacing with the further centering bolt (21) for a form-fitting interaction. As such, the hub (10) of Obrist constitutes an equivalent of the “further form-fitting centering element.” This is because the hub (10) of Obrist (via the aforesaid recess (12) thereof) carries out the function that is specified in lines 3-4 of claim 16, said function being “a form-fitting interaction.” Also, the hub (10) isn't excluded by any explicit definition provided in Applicant's specification, and the hub (10) produces substantially the same result as the corresponding “further form-fitting centering element (30)” of Applicant. Based on the foregoing, the hub (10) will hereinafter be referred to as “the further form-fitting centering element (10).” Thus, the precision system comprises the further centering bolt (21), which is configured for a form-fitting interaction with the further form-fitting centering element (10). Lastly, please note the further centering bolt (21) corresponds to four working cylinders (22) (please see Figure 1), which vertically adjusts an elevating platform (17) to which the further centering bolt (21) is mounted [column 5, lines 28-42]. Noting this, through synchronized actuation of the four working cylinders (22) with the pressurized working cylinder (28) of the precision system, the form-fitting interaction (between the further centering bolt (21) and the further form-fitting centering element (10)) is synchronized with the centering recess (27) of the at least one centering device. Thus, the further centering bolt (21) is configured for a further form-fitting interaction with the further form-fitting centering element (10) of each of the at least one holding unit (2) of the plurality of precision devices (2, 9) for placement into the storage (1) or removal from the storage (1) respectively, said form-fitting interaction (between the further centering bolt (21) and the further form-fitting centering element (10)) being synchronized with the centering recess (27) of the at least one centering device.
Claim 17: With regards to the storage lift (84), said storage lift (84) is configured to selectively provide respectively one of the plurality of precision devices (2, 9) that were comprised in the storage lift (84) for placement into the storage (1) or removal from the storage (1) for an access of the handling robot (76). This can be seen in Figure 14.
Claim 18: As can be seen between Figures 12 and 14 of Obrist, the storage lift (84) comprises at least one transfer surface (86), which carries the at least one holding unit (2) of one of the plurality of precision devices (2, 9) (that are comprised in the storage lift (84)) for the placement into the storage (1) or removal from the storage (1). Note that the when the at least one holding unit (2) incurs placement or removal, for example, the tools thereof are moved into or out of the lift (84) along with the at least one holding unit (2). Noting this, at least during the placement into the storage (1) or removal from storage (1), the storage lift (84) carries the tools and the corresponding at least one holding unit (2) for the placement into the storage (1) or removal from the storage (1).
Claim 19: The storage lift (84), the handling robot (76), and the at least one centering device, which comprises the (automatedly movable) centering recess (27), are all disposed within a transfer zone of the precision system. Please be advised that the transfer zone corresponds to that area located outside of a processing device (75) of the precision system (see Figure 14). Please further be advised that each of the centering device, the storage lift (84), and the handling robot (76) are firmly fixed on the ground. The storage lift (84) is firmly fixed on the ground when it is stopped/braked on the induction loop (85). The centering device is firmly fixed on the ground via the frame of the storage (1), and the handling robot (76) is firmly fixed on the ground between the processing device (75) and storage lift (84), for example.
Claim 20: Please be advised that lines 2-4 of claim 20 set forth therein, “a holding unit identifying device…which is configured for an identification of individual holding units.” Noting this, “a holding unit identifying device” is being interpreted by Examiner under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Please be advised that “a holding unit identifying device” is being interpreted as comprising the structure disclosed on page 10, lines 14-20 of Applicant's specification filed on 4/20/2026, as well as equivalents thereto.
With respect to the prior art and Obrist, Figure 2 shows a reading device (38) which is configured for an identification of individual holding units (2) of the storage lift (84). That is to say configured for an identification of individual holding units (2) provided from the holding units (2) of the plurality of precision devices (2, 9) of the storage lift (84) to the storage (1). This identification is achieved by the reading device (38) reading an electronic storage device (27) of the holding unit (2) [column 6, lines 8-13].
As such, the reading device (38) of Obrist constitutes an equivalent of the “holding unit identifying device.” This is because the reading device (38) of Obrist carries out the function that is specified in lines 4-5 of claim 20, said function being “identification of individual holding units from the holding units of the plurality of precision devices for placement into storage or removal of the storage lift.” Also, the reading device (38) isn't excluded by any explicit definition provided in Applicant's specification, and the reading device (38) produces substantially the same result as the corresponding “holding unit identifying device (70)” of Applicant. Based on the foregoing, the reading device (38) of Obrist will hereinafter be referred to as “the holding unit identifying device (38).”
Thus, the precision system of Obrist comprises the holding unit identifying device (38) for an identification of individual holding units (2) that were provided from the holding units (2) of the plurality of precision devices (2, 9) of the storage lift (84) to the storage (1). Lastly, the holding unit identifying device (38) is “allocated to the at least one centering device.” This is because the at least one centering device comprises the centering recess (27), and further comprises, for example, the shaft end (26) (in which is formed the centering recess (27)) and the frame of the storage (1) to which at least the shaft end (26) is mounted. Noting this, as can be seen in Figure 5 of Obrist, the holding unit identifying device (38) is allocated to the centering device via the frame thereof.
Claim Rejections - 35 USC § 103
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Obrist (U.S. Patent No. 5,242,359 A) in view of Babel et al. (U.S. Patent No. 4,356,620 A).
Be advised that Babel et al. was cited by Examiner on the PTO-892 mailed on 1/22/2026.
Claim 4: The claim is directed to a product (i.e. at least a portion of the at least one holding unit which forms the plurality of storage bins is embodied as a…sheet metal part) constructed by a process comprising “lasered or riveted bent”. Therefore, the limitation concerning the “lasered or riveted bent” is considered to be a product-by-process limitation. Please be advised that product-by-process limitations are not limited to the manipulations of the recited steps, only the structure implied by the steps. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). See MPEP section 2113.
With respect to Obrist, each storage bin (4, 8) comprises a disk magazine/bearer (4) and a plurality of storage places (6) (see Figure 3). Obrist though, doesn’t provide disclosure on either the disk magazine/bearer (4) or the plurality of storage places (6) being a sheet metal part.
Figure 1 of Babel et al. though, shows a disk magazine (5) that comprises rings (10, 11) formed of sheet metal [column 2, lines 13-16]. Please be advised that sheet metal provides the disk magazine (5) with the advantage of being lightweight yet durable.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the disk magazine/bearer (4) of Obrist from sheet metal in accordance with the disclosure of Babel et al., so as to provide each storage bin (4, 8) with the advantage of a disk magazine/bearer (4) that is lightweight yet durable.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Obrist (U.S. Patent No. 5,242,359 A) in view of Zhu (China Publication No. CN 208179973 U).
Be advised that Zhu was cited by Examiner on the PTO-892 mailed on 1/22/2026.
Please be advised an EPO Machine Translation of Zhu is relied upon below. This EPO Machine Translation of Zhu was provided on 1/22/2026.
Claim 5: As can be seen in Figures 1 and 4 of Obrist, a portion (3) of the at least one holding unit (2) comprises the at least one form-fitting centering element (13). Obrist though, does not provide disclosure on the portion (3) of the at least one holding unit (2) being a “metal element” which is “different from sheet metal.” Please be advised that the portion (3) is formed as a solid, support shaft (3) on which the storage bin (4, 8) is mounted.
With respect to Zhu, Figure 1 shows a holding unit comprising a solid, support shaft (2) on which a storage bin (1) is mounted. Per Zhu, the support shaft (2) is a metal material with a certain strength, such as steel [EPO Machine Translation, paragraph 0035].
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have formed the portion/solid support shaft (3) of the at least one holding unit (2) of Obrist from steel, in accordance with the disclosure of Zhu, so as to provide the at least one holding unit (2) of Obrist with the advantage of a portion/solid support shaft (3) that is strong and durable due to being implemented as steel. As such, the (modified) portion/solid support shaft (3) of Obrist which comprises the at least one form-fitting centering element (13) is implemented as solid, steel element which is different, for example, from sheet metal.
Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Obrist (U.S. Patent No. 5,242,359 A) in view of Ju (U.S. PG Publication No. 2021/0187681 A1).
Be advised that Ju was cited by Examiner on the PTO-892 mailed on 1/22/2026.
Claim 6: As can be seen in Figures 1-5 of Obrist, the at least one holding unit (2) forms only one kind of storage bin (4, 8) in which tools/tool assemblies are placed and removed from a horizontal placement or removal direction. As such, Obrist does not teach, “wherein the at least one holding unit forms at least two different kinds of storage bins.” Please be advised that each “second kind” of storage bin (4, 8) of Obrist is mounted to a support shaft (3) of the at least one holding unit (2).
Figure 4 of Ju though, shows a holding unit (1) which forms at least two different kinds of storage bins (41, 42, 51, 52). A second kind of storage bin (41, 42) thereof provides for tools being placed and removed from a horizontal placement or removal direction, whereas a first kind of storage bin (51, 52) thereof provides for the tools being placed and removed from a vertical placement or removal direction. As can be seen within Figure 4 of Ju, said second kind (41, 42) and said first kind of storage bins (51, 52) are each installed on a support shaft (30) such that the first kind of storage bin (51, 52) is spaced apart vertically from an upper side of the second kind of storage bin (41, 42) [paragraph 0084]. Due to this configuration of the holding unit (1), tools are able to be stored in the holding unit (1) in both a horizontal orientation and a vertical orientation.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have provided the at least one holding unit (2) of Obrist with the first kind of storage bin (51, 52) of Ju so as to provide the at least one holding unit (2) of Obrist with the advantage of being able to store tools therein in both a horizontal orientation and a vertical orientation. In making this modification, it is noted that a first kind of storage bin (51, 52) of Ju is mounted to the support shaft (3) of Obrist so as to be spaced apart vertically from an upper side of a corresponding second kind of storage bin (41, 42) of Obrist in accordance with the disclosure of Ju. Thus, the modified at least one holding unit (2) of Obrist forms at least two different kinds of storage bins, the second kind (4, 8) (as shown in at least Figure 3 of Obrist) and the first kind (51, 52) as disclosed by Ju (and as shown in Figure 4 of Ju).
Claim 7: As stated above in the rejection of claim 6, the modified at least one holding unit (2) comprises the first kind of storage bin (51, 52) as disclosed by Ju. This first kind of storage bin (51, 52) is implemented for a placement into storage or a removal from storage of tools from a vertical placement or removal direction (see Figures 9-11 of Ju in which a machining tool (8) is removed from the first kind of storage bin (51, 52) by in a vertical removal direction).
Claim 8: As can be seen between at least Figures 3-4 of Obrist, each second kind of storage bin (4, 8) of Obrist is mounted to the support shaft (3) of the at least one holding unit (2). Noting this, each second kind of storage bin (4, 8) is implemented such that tools are placed and removed from a horizontal placement or removal direction. Note that Figure 14 of Obrist shows therein the horizontal approach of the handling robot (76) toward the at least one holding unit (2) for tool placement or removal.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Obrist (U.S. Patent No. 5,242,359 A).
Claim 12: As was stated above in the rejection of claim 10, the precision device (2, 9) of Obrist is shown in at least Figure 4 as comprising the planar base plate (9) carrying the at least one holding unit (2) such that it (2) is horizontally displaceable. Obrist though, does not provide disclosure on the planar base plate (9) being “made of plastic, in particular of a polyvinyl chloride.” However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the planar base plate (9) of Obrist be made of plastic, in particular of a polyvinyl chloride, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. In this instance, the planar base plate (9) would be lightweight yet durable when made of plastic, in particular of a polyvinyl chloride, and thus suitable for the intended use of supporting the at least one holding unit (2) both during transport and within the storage (1) and for positioning the at least one holding unit (2) in various angular positions.
Response to Arguments
Applicant's arguments filed 4/20/2026 have been fully considered but they are not persuasive.
First, with respect to claim interpretation, Applicant argues the following:
The Office Action also states that the application includes one or more claim limitations that do not use the word "means," but are nonetheless being interpreted under 35 U.S.C. 112(±) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. The Office Action referred to specific claim limitations.
Applicant respectfully disagrees with the Examiner's characterization of the cited claim limitation(s) as invoking 35 U.S.C. 12(f). The claim language, when read in light of the specification from the perspective of a person of ordinary skill in the art, recites sufficient structure to perform the recited functions and therefore does not fall under §112(f). Applicant maintains this position and reserves all rights to further address this issue in any appropriate forum if necessary.
Applicant’s argument has been considered, but is not persuasive. In each instance of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph being invoked, it was because the corresponding claim limitation uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Noting the above, Applicant broadly arguing that, “The claim language, when read in light of the specification from the perspective of a person of ordinary skill in the art, recites sufficient structure to perform the recited functions and therefore does not fall under §112(f)” is not a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. This is because Applicant hasn’t actually presented any specific arguments with respect to sufficient structure to perform the claimed function when it comes to any instance of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph being invoked. On top of this, for each instance of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph that was invoked, Applicant did not amend the corresponding claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function).
For the foregoing reasons, Applicant’s arguments are not found to be persuasive.
Next, with respect to the claim rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, Applicant argues the following:
Except for the rejection under point 33 ("floating bearing") in the Office Action, all of the claim rejections from pages 8 to 16 of the Office Action have been attended to by making amendments to the respective claims.
With respect to point 33, Applicant respectfully submits that a "floating bearing" is an established technical term that is known to a person of skilled in the art and will be correctly understood by the person of skilled in the art. In the context of the present invention as claimed, it means that the holding unit can move freely in all horizontal directions on the base plate.
Applicant’s argument has been considered, but is not persuasive. First, be advised that under Point 33 in the Non-Final Rejection mailed on 1/22/2026, unlike what Applicant argues, Examiner never made any mention of “a floating bearing”. This is because a floating bearing was neither recited in the previous claim set filed on 11/4/2025 nor in the current claim filed on 4/20/2026. Next, upon review of Applicant’s specification, it is noted that there appears to be no disclosure therein of a floating bearing. As such, it unclear to Examiner as to why Applicant has submitted arguments for a floating bearing that was neither disclosed nor claimed. Considering that a floating bearing is neither disclosed nor claimed, and further considering that the holding unit is neither disclosed in the specification nor claimed as being able to “move freely in all horizontal directions on the base plate,” it remains unclear to Examiner as to what is meant by the limitation of claim 11 corresponding to, “the at least one holding unit is supported on the base plate in a floating manner.” Since Applicant’s arguments are directed to an element (“floating bearing”) that Examiner never addressed under Point 33 in the Non-Final Rejection, and because Applicant’s arguments are directed to an element (“floating bearing”) that was neither disclosed nor claimed, Applicant’s arguments aren’t found to be persuasive.
Next, with respect to the prior art and Obrist, Applicant argues the following:
As recited above, claim 1 recites a precision system for placement into storage and/or removal from storage of tools or tool chucks, having a handling robot for loading of a storage lift with the tools or the tool chucks. Applicant respectfully submits that the storage lift set forth in claim 1 is not interpreted in the Office Action as disclosed in the specification leading to two fundamental errors in the anticipation rejection. First, Applicant respectfully submits that the anticipation rejection uses an unreasonable interpretation of the claim term "storage lift" that is inconsistent with the Applicant's specification…
The rejection in the Office Action appears to hinge on construing the "storage lift" of claim 1 as the mobile, floor-guided vehicle (Flurförderfahrzeug, 84) of Obrist. This is not a valid Broadest Reasonable Interpretation (BRI). The BRI standard, while broad, usually does not permit an interpretation that is contrary to the teachings of the application's own disclosure. Throughout Applicant's specification, the "storage lift" (1) is consistently and unambiguously disclosed as a stationary, vertical, high-density storage and retrieval system. For example, as shown in the figures and described on page 18, lines 10-14, the storage lift (16) and the associated robot module (76) are fixedly mounted to the ground (68). The function of the storage lift is to store holding units (24) in a space-efficient, typically vertical arrangement and to bring them to a fixed transfer zone (66) for processing. This is the common technical understanding of a storage lift.
In contrast, the vehicle (84) in Obrist is explicitly a mobile, wheeled, horizontal transport vehicle-an Automated Guided Vehicle (AGV). Its primary purpose, as described in Obrist (Figs. 14 and 15 and associated description), is to shuttle rotary racks (2) across a factory floor between physically separate, stationary locations, such as the magazine station (77) and the loading station (104). Applicant respectfully submits that equating a stationary, vertical storage tower with a mobile, horizontal transport vehicle is not a "broad" interpretation; it is a technically and conceptually flawed one. The two devices serve entirely different functions and are structurally distinct:
1) Structure: one is a fixed, vertical apparatus, while the other is a mobile, wheeled vehicle; and
2) Function: one provides high-density storage within a fixed footprint, while the other provides material flow across a variable area.
To provide an analogy, this interpretation is akin to construing the term "warehouse" to read on a "forklift." While both are involved in logistics, they are fundamentally different technologies. Because the Office Action's interpretation of "storage lift" is unreasonable in light of Applicant's disclosure, Obrist's vehicle (84) does not teach this limitation.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “Throughout Applicant's specification, the "storage lift" (1) is consistently and unambiguously disclosed as a stationary, vertical, high-density storage and retrieval system” and “The function of the storage lift is to store holding units (24) in a space-efficient, typically vertical arrangement and to bring them to a fixed transfer zone (66) for processing”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
At no point within the claim set is the claimed storage lift claimed by Applicant as being “stationary.” Furthermore, at no point within the claim set is the claimed storage lift claimed as being a vertical, high-density storage and retrieval system. Also, at no point within the claim set is the claimed storage lift claimed by Applicant as being able to “store holding units (24) in a space-efficient, typically vertical arrangement and to bring them to a fixed transfer zone (66) for processing.” Regarding the transfer zone, it is only claimed in claim 19, it’s never claimed as being “stationary.” Moreover, Applicant never claims the storage lift as having a configuration that “a space-efficient, typically vertical arrangement,” and Applicant also never claims the storage lift as bringing the claimed at least one holding unit into “a fixed transfer zone for processing.” Again, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
Furthermore, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “one is a fixed, vertical apparatus” and “one provides high-density storage within a fixed footprint”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). First, at no point within the claim set is the claimed storage lift claimed by Applicant as providing a “high-density storage within a fixed footprint.” Next, as it pertains to the claimed storage lift being “a fixed, vertical apparatus,” it is noted that Applicant never claims the storage lift as being a “vertical apparatus.” With respect to the claimed storage lift being “fixed,” Applicant is seemingly arguing about fixed in terms of fixed meaning fixed from movement or immovable. Noting this, Applicant never actually claims the claimed storage lift as being fixed from movement or immovable. Rather, Applicant only goes as far to set forth the storage lift in claim 19 as being “firmly fixed on a common base or on a ground.” Noting this, with respect to Obrist, the storage lift (84) is firmly fixed on the ground when it is stopped/braked on the induction loop (85), for example.
While Examiner agrees that there are differences between the disclosed storage lift and the storage lift (84) of Obrist, Applicant has not brought out these differences in the current claim set. Examiner cannot read limitations, which are NOT actually claimed by Applicant, into the claims of the current claim set. Noting that Applicant hasn’t, for example, set forth the storage lift as being as a stationary, vertical, high-density storage and retrieval system that provides high-density storage within a fixed footprint, and hasn’t, for example, set forth the storage lift as functioning to
store holding units in a space-efficient, typically vertical arrangement and to bring them to a fixed transfer zone for processing, Examiner respectfully disagrees that his “interpretation of ‘storage lift’ is unreasonable in light of Applicant's disclosure.” Rather, it appears that Applicant’s claim language corresponding to the storage lift was broader than what Applicant actually intended.
For the foregoing reasons, Applicant’s arguments are not found to be persuasive.
Next, with respect to the prior art and Obrist, Applicant also argues the following:
As recited above, claim 1 recites a precision system for placement into storage and/or removal from storage of tools or tool chucks, having a handling robot for loading of a storage lift with the tools or the tool chucks. Applicant respectfully submits that the storage lift set forth in claim 1 is not interpreted in the Office Action as disclosed in the specification leading to two fundamental errors in the anticipation rejection. First, Applicant respectfully submits that the anticipation rejection uses an unreasonable interpretation of the claim term "storage lift" that is inconsistent with the Applicant's specification and second, Applicant respectfully submits that the anticipation rejection uses an improper combination of features from physically separate and functionally distinct machines disclosed in Obrist to reconstruct the claimed invention. These two points will be discussed in more detail below.
For the sake of argument only, even if the unreasonable construction of "storage lift" were to be accepted, the rejection still fails because Obrist does not disclose the claimed system architecture.
Claim 1, as amended, recites a single, integrated precision system comprising a storage lift and a centering device. Claim 1 further requires the centering device to provide for the orientation of "each of the holding units of the plurality of precision devices. respectively." In Obrist, the system is not integrated but is a modular and distributed collection of separate machines. The centering device (comprising bolt 21 and recess 27) is disclosed as being part of the stationary magazine station (77). This station is a physically separate machine from the mobile vehicle (84). The Office Action has therefore created a fictional, hybrid apparatus by taking the "storage lift" from one machine (the mobile vehicle 84) and the "centering device" from an entirely separate machine (the stationary station 77). Anticipation under 35 U.S.C. § 102 requires that a single reference disclose the claimed invention as a whole, arranged as in the claim. It does not permit combining disparate parts of a reference to meet the claim limitations. The integrated system of Claim 1, wherein the storage lift and centering device form a cohesive unit, is simply not present in the distributed, modular system of Obrist.
In view of the above, Applicant respectfully submits that Obrist does not disclose all the limitations of claim 1 as amended. Therefore, Applicant respectfully submits that the present invention as claimed in claim 1 is not anticipated by Obrist.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “Claim 1, as amended, recites a single, integrated precision system comprising a storage lift and a centering device” and “The integrated system of Claim 1, wherein the storage lift and centering device form a cohesive unit, is simply not present in the distributed, modular system of Obrist”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). First, at no point within claim 1 is the claimed precision system set forth as being “a single, integrated precision system.” On top of this, it is actually unclear if the claimed precision system comprises the storage lift. Please note that lines 1-5 of claim 1 set forth the following: “A precision system for placement into storage and/or removal from storage of tools or tool chucks, having a handling robot for loading of a storage lift with the tools or the tool chucks, the storage lift comprising a plurality of precision devices…” Please note that Applicant sets forth the handling robot as having an intended use of “for loading of a storage lift,” but doesn’t make clear whether or not the storage lift is an element of the precision system to which amended claim 1 is directed.
Furthermore, Applicant never sets forth the claimed storage lift and the claimed at least one centering device “form[ing] a cohesive unit.” Within lines 19-20 of claim 1, for example, it is noted that Applicant sets forth, “the precision system for placement into storage and/or removal from storage of tools or tool chucks further having at least one centering device.” While Applicant sets forth the precision system as further having “at least one centering device,” at no point within claim 1 does Applicant actually claim the at least one centering device as being an element of the storage lift, for example. From lines 4-18 of claim 1, Applicant sets forth the structure of the storage lift. In lines 4-18 though, Applicant doesn’t set forth the storage lift as comprising the “at least one centering device.” Rather, Applicant opted in lines 19-20 of claim 1 to set forth the overall precision system as having the “at least one centering device.” Thus, Examiner respectfully disagrees that in claim 1 that is required that “the storage lift and centering device form a cohesive unit.”
Since claim 1 doesn’t actually “recites a single, integrated precision system comprising a storage lift and a centering device” wherein the “storage lift and centering device form a cohesive unit,” Examiner is not precluded from applying Obrist in the manner that he has. Noting this, with respect to Obrist, as can be seen in Figure 14, the precision system comprises a storage lift (84) which in turn comprises a plurality of precision devices (2, 9) for placement into storage (1) or removal from the storage (1) that are configured for an automated placement into the storage (1) or removal from the storage (1) of the tools into or out of the storage lift (84). It is noted that Figure 14 shows two conveyor systems (87, 88) on each of which the plurality of precision devices (2, 9) is configured to incur placement. It is through actuation of these two conveyor systems (87, 88) that a selected one of the plurality of precision devices (2, 9) (and the tools held therein) incurs automated placement into or out of the storage (1) and into or out of the storage lift (84). The precision system further comprises at least one centering device, comprising an automatedly movable centering recess (27) for a submillimeter-precise horizontal orientation of the at least one holding unit (2) of the selected one of the plurality of precision devices (2, 9) at a given time. Please be advised that is achieved by generating a form-fit connection of the centering recess (27) (which is a conic center hole) [column 5, line 45] with at least one form-fitting centering element (13). Please note that the at least one form-fitting centering element (13) is embodied as a centering cone [column 5, line 63] and is an element of the at least one holding unit (2). It is also noted that this form-fit connection can be established between the centering recess (27) and each of the plurality of precision devices (2, 9). However, only one of the plurality of precision devices (2, 9) is able to be centered in the storage (1) at a given time. Moreover, be advised the centering recess (27) is “automatedly movable” by means of a pressurized working cylinder (28) (see Figure 1 of Obrist) [column 5, lines 47-65].
Based on the foregoing, the precision system of Obrist comprises the storage lift (84) and the at least one centering device, which in turn comprises the automatedly movable centering recess (27). As such, in contrast to what Applicant argues, Obrist does indeed discloses all of the limitations of claim 1 as amended.
For the foregoing reasons, Applicant’s arguments are not found to be persuasive.
Next, with respect to the prior art and the rejection under 35 U.S.C. 103, Applicant argues the following:
Applicant respectfully submits that the claimed invention would not have been obvious as well and as a whole represents a fundamentally different system architecture and design philosophy that the prior art, particularly Obrist, teaches away from.
For an invention to be obvious, there must have been some reason, suggestion, or motivation for a person of ordinary skill in the art (POSITA) to modify the prior art or combine prior art teachings to arrive at the claimed invention with a reasonable expectation of success. Such motivation is absent here; in fact, the prior art teaches in the exact opposite.
The starting point of any obviousness-analysis is the prior art in its entirety, including its stated objectives. The core inventive concept of Obrist is to achieve maximum manufacturing flexibility through a modular, distributed system. This is accomplished by decoupling the transport of tool magazines from the stationary processing cells. The mobile AGVs (84), buffer stations (106), and multiple magazine stations (77) are all designed to allow tool magazines to be prepared offline and flexibly routed to any number of different locations on a factory floor. The very essence of Obrist's teaching is modularity and distribution.
In contrast, the core concept of the Applicant's invention is to achieve the highest possible precision, reliability, and compactness by creating a single, integrated, stationary system. By physically and structurally integrating the storage lift (16), transfer zone (66), and centering device (56) onto a common, fixed base (68), Applicant's system eliminates the significant alignment uncertainties, tolerances, and potential for error that are inherent in docking a mobile vehicle with a stationary unit.
To arrive at the claimed invention from Obrist, a POSITA would not be making a simple or predictable substitution. They would be required to systematically abandon the core teaching and stated advantages of Obrist. Specifically, a POSITA would have to:
1) discard the mobile AGV (84), the central element for achieving transport flexibility;
2) discard the concept of separate, standalone magazine stations (77); and
3) re-integrate the storage function of the magazine station and the precision centering function into a single, stationary apparatus, thereby destroying the very flexibility that Obrist champions.
Such a modification runs directly contrary to the explicit goals of Obrist. A POSITA seeking to improve upon Obrist's system would be motivated to enhance its flexibility and modularity, not to eliminate it. Therefore, Applicant respectfully submits Obrist teaches away from the claimed integrated architecture. There would have been no motivation to combine or modify Obrist in a manner that fundamentally contradicts its inventive purpose. Moreover, the claimed integrated architecture achieves advantages that would not have been expected from the teachings of Obrist. By sacrificing the flexibility of a distributed system, Applicant's invention as claimed achieves a superior and unexpected level of precision and reliability. The precision of the claimed system is not merely a matter of degree; it is the result of a different design paradigm. The elimination of the interface between a mobile vehicle and a stationary dock removes numerous sources of error, including vehicle positioning tolerance, floor unevenness, wheel wear, and docking dynamics. The result is a system capable of submillimeter-precise orientation that is more robust and reliable than what could be achieved by a system like Obrist's. This synergy and unexpected result, arising from a non-obvious structural modification, are strong evidence of non-obviousness.
Thus, Applicant respectfully submits here is no apparent reason or motivation, nor any teaching that would have led the POSITA would have considered using a storage lift in the context of Obrist's disclosure. In view of this analysis, Applicant respectfully submits that the present invention as claimed in claims 4-8 and 12 are not obvious in view of Obrist.
First, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “Applicant's invention is to achieve the highest possible precision, reliability, and compactness by creating a single, integrated, stationary system. By physically and structurally integrating the storage lift (16), transfer zone (66), and centering device (56) onto a common, fixed base (68), Applicant's system eliminates the significant alignment uncertainties, tolerances, and potential for error that are inherent in docking a mobile vehicle with a stationary unit”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). With respect to Applicant’s argument that “By physically and structurally integrating the storage lift (16), transfer zone (66), and centering device (56) onto a common, fixed base (68), Applicant's system eliminates the significant alignment uncertainties, tolerances, and potential for error that are inherent in docking a mobile vehicle with a stationary unit,” please note the following. As can be seen in claim 19, Applicant sets forth the following: “wherein at least the storage lift and the at least one centering device, and the handling robot, are -at least in a transfer zone of the precision system for placement into storage or removal from storage- formed fixed on a common base or on a ground.” This limitation shows that Applicant doesn’t claim a “fixed base” as argued. Moreover, the claimed base isn’t necessarily required as said claimed base is an element in an “or” limitation, i.e. “a common base or on a ground.” Thus, Applicant is arguing about an element that isn’t even claimed (i.e. the “fixed base”), and that isn’t necessarily required, noting that instead of being firmly fixed on the claimed “common base,” the storage lift, the at least one centering device, and the handling robot can instead be firmly fixed on a ground. Again, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
Furthermore, Examiner is unsure as to why Applicant is arguing about modifications that aside from not from actually being made, don’t even appear to be necessary. Examiner never discussed anything along the lines of “discard the mobile AGV (84)” of Obrist. Examiner also never discussed anything along the lines of “discard the concept of separate, standalone magazine stations (77)” of Obrist. Examiner also never discussed anything along the lines of “re-integrate the storage function of the magazine station and the precision centering function into a single, stationary apparatus.” None of these modification were made in the rejections to claim 4-8 and 12 under 35 U.S.C. 103. Since neither the previous claim set nor the current claim set actually require “physically and structurally integrating the storage lift, transfer zone, and centering device onto a common, fixed base,” Examiner never considered any modifications like the three that Applicant argued above with, for example, “discard the mobile AGV (84)” of Obrist and “discard the concept of separate, standalone magazine stations (77)” of Obrist. Since Applicant’s hypothetical modifications to Obrist weren’t ever made by Examiner, these arguments aren’t applicable to the actual rejections of claim 4-8 and 12 under 35 U.S.C. 103.
For the foregoing reasons, Applicant’s arguments are not found to be persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 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 mailing date of this final action.
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/MICHAEL VITALE/Examiner, Art Unit 3722
/SUNIL K SINGH/Supervisory Patent Examiner, Art Unit 3722
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