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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 3, 5-8,10-16 and 18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-2 and 4-14 of prior U.S. Patent No. 10,780,576. This is a statutory double patenting rejection.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 19-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-17 of U.S. Patent No. 10,780,576 (“Patent ‘576”) in view of Miller (US 2017/0355077 A1).
Patent ‘576 in claims 19-21 teach all that is claimed except for the language “said plurality of storage modules containing the article” the instant claims describe “said plurality of said storage modules, said storage module therein containing the article” (claim 19) and instead of “optionally move the article to a user selected delivery point for retrieving the article in the room area” (claim 15 of Patent ‘576 ) the instant claims require allowing sufficient time for said gantry to translate “optionally move the article or module to a user selected delivery point for retrieving the article in the room area” (claim 19 emphasis added). Miller, however, teaches that it is well-known to provide flexibility in these types of upper storage systems to allow a user to either move the entire module or retrieve a specific article therein for delivery (fig. 22a and para. 61-62). It would thus be obvious to one with ordinary skill in the art to modify Patent ‘576 with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention to provide a user with more flexibility in the use of the storage system.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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; or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 6-8, 10-16, 18-19 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (US 2017/0355077 A1).
Miller (fig. 1-30) suspended automation system comprising:
(re: claim 1) a rail array secured to a ceiling (fig. 21 and fig. 10A-10B showing ceiling mounted X-Y rail array 40 with motorized gantry 42; para. 57-62; wherein Examiner notes that although citations are primarily to fig. 21+ embodiment showing storage modules on roof further citations are also made to other embodiments that share the same features and/or functionalities);
a gantry (Id.);
a drive mechanism coupled to said gantry for transit of said gantry in an area of said rail array (fig. 22b near 50; see also fig. 13-16 and para. 51, 55, 57-58 teaching that drive wheel modules 50 moving gantry in X-Y rail directions);
a platform (48) suspended from said gantry; and
a plurality of storage modules located above said rail array, each of said plurality of storage modules having a volume for storage of an article and positioned within cells of said rail array (fig. 21, 22A teaching embodiment where storage modules 69 are present above the X-Y rails; para. 58-62 teaching delivery of either entire storage module or an article therein to destination);
(re: claim 3) wherein said drive mechanism includes interspersed powered wheel modules and lifters (para. 57-59);
(re: claim 6) one or more robotic arms associated with said platform (fig. 29 showing robotic arms near 56; 62; para. 51-52 teaching robotic arms 56 with motorized counter-balance system 60);
(re: claim 7) one or more counter-balances to said one or more robotic arms (Id.);
(re: claim 8) wherein at least one of said plurality of storage modules is an automation sub-system (fig. 29 and para. 61 teaching automated retrieval and replacement);
(re: claim 10) one or more cameras associated with said platform (fig. 22 near 58 and para. 53);
(re: claim 11) one or more sensors associated with said rail array, said gantry, or said platform (para. 53);
(re: claim 12) cables between said gantry and platform, said cables being retracted with winches in said gantry to raise and lower said platform (fig. 22A and para. 59);
(re: claim 13) a gantry pivot for rotating said gantry (Id. teaching that gantry includes motorized elements which “support, raise, lower, tilt and now rotate platform B 48”);
(re: claim 14) a motorized platform pivotably mounted to said platform (Id.);
(re: claim 15) wherein said human or computer user interface is a display, touch screen tablet, auditory, smart phone, a joystick, or a combination thereof (para. 62 teaching controller with human user interface);
(re: claim 16) wherein the ceiling is part of a room or trellis (fig. 21).
(re: claims 18-21) The claimed process steps are performed in the normal operation of the system cited above.
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 of this title, 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.
Claims 2, 5, 17, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US 2017/0355077 A1) in view of Austrheim et al. (US 2023/0127239 A1) and Ingram-Tedd et al. (“Ingram”)(US 2020/0324971).
Miller as set forth above teaches all that is claimed except for expressly teaching
(re: claims 2, 22) wherein one of the storage modules is accessible from a roof or wall through a hatch in said roof or wall;
(re: claim 5) wherein said gantry is automatically transferrable to a second rail array;
(re: claim 17) wherein at least two of said plurality of storage modules stacked on one another forming a stack.
(re: claim 20) wherein the delivery point is a transfer point for said gantry to a second area.
Here, it is noted that Miller already teaches that the suspended system may be configured to connect with multiple rooms/areas, thus allowing more floor space in those other areas (Cf. fig. 6-7; para. 47-50 teaching transfer of gantry, i.e., delivery point, to a second area, wherein gantry is automatically transferred to a second rail array).
Austrheim further teaches that it is well-known in the automated material handling/sorting arts to install a hatch to cover roof openings and isolate the housing environment from an outside environment (fig. 20 near 804; Abstract; para. 36, 145).
Ingram further teaches that it known to stack a plurality of storage modules in a vertical configuration to further optimize space usage (fig. 3-4 near 10; para. 77-81, 87-90).
It would thus be obvious to one with ordinary skill in the art to modify the base reference with these prior art teachings—with a reasonable expectation of success—to arrive at the claimed invention. The rationale for this obviousness determination can be found in the prior art itself as cited above and from an analysis of the prior art teachings that demonstrates that the modification to arrive at the claimed invention would merely involve the substitution/addition of well-known elements (e.g., hatch or stacked configuration) with no change in their respective functions. Moreover, the use of prior art elements according to their known functions is a predictable variation that would yield predictable results (e.g., benefit produced by known function), and thus cannot be regarded as a non-obvious modification when the modification is already commonly implemented in the relevant prior art. See also MPEP 2143.I (teaching that simple substitution of one known element for another to obtain predictable results is known to one with ordinary skill in the art); 2144.06, 2144.07 (teaching as obvious the use of art recognized equivalences). Further, the prior art discussed and cited demonstrates the level of sophistication of one with ordinary skill in the art and that these modifications are predictable variations that would be within this skill level. Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the invention of Miller for the reasons set forth above.
Conclusion
Any references not explicitly discussed above but made of record are regarded as helpful in establishing the state of the prior art and are thus considered relevant to the prosecution of the instant application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH C RODRIGUEZ whose telephone number is 571-272-3692 (M-F, 9 am – 6 pm, PST). The Supervisory Examiner is MICHAEL MCCULLOUGH, 571-272-7805.
Alternatively, to contact the examiner, send an E-mail communication to Joseph.Rodriguez@uspto.gov. Such E-mail communication should be in accordance with provisions of the MPEP (see e.g., 502.03 & 713.04; see also Patent Internet Usage Policy Article 5). E-mail communication must begin with a statement authorizing the E-mail communication and acknowledging that such communication is not secure and may be made of record. Please note that any communications with regards to the merits of an application will be made of record. A suggested format for such authorization is as follows: "Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file”.
Information regarding the status of an application may also be obtained from the Patent Center: https://patentcenter.uspto.gov/
/JOSEPH C RODRIGUEZ/Primary Examiner, Art Unit 3655
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November 13, 2025