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 Objections
Claim 22 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 22, line 2: -- the at least one structural weakening--. Appropriate correction is required.
Claim 24 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 24, line 2: -- the at least one structural weakening--. Appropriate correction is required.
Claim 24, line 4: -- the at least one structural weakening--. Appropriate correction is required.
Claim 24, line 6: -- the at least one structural weakening--. Appropriate correction is required.
Claim 25 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 25, line 2: -- the at least one structural weakening--. Appropriate correction is required.
Claim 25, lines 5-6: -- the at least one structural weakening--. Appropriate correction is required.
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.
Claims 12, 14, 15, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Brumm 11,084,622 in view of Schluter 2012/0305511.
Regarding claim 12, Brumm discloses a storage facility (Figs 1-3, #100), comprising: a base frame (Fig 1, #102 & #104) made of vertical supports (Fig 1, #102) and horizontal crosspieces (Fig 1, #104);
an aisle (interior space between the vertical supports (Figs 1 & 2, #102) i.e. where the load (Fig 1, #110) in Fig 1 is located) leading through the base frame (Fig 1, #102 & #104);
a carrier (Fig 2, #108) for storing and removing goods (Fig 2, #110), the carrier (Fig 2, #108) being movable (capable of being moved) on two rails (Fig 2, #106) (annotated Fig 2 below) that are arranged in the aisle (as shown in Fig 2),
wherein each of the two rails (Fig 2, #106) (annotated Fig 2 below) comprises
a horizontal limb (annotated Fig 2 below) that forms a running surface (annotated Fig 2 below) for the carrier (Fig 2, #108), and
at least one vertical limb (annotated Fig 2 below), and
wherein each of the two rails (annotated Fig 2 below), in a fastening region (Fig 3, #128)) extending only over a partial length of the respective rail (Figs 2 & 3, #106), is fastened by fastening elements (Fig 3, #134) to one of the vertical supports (Fig 3, #102) and/or horizontal crosspieces, and
wherein the at least one vertical limb (annotated Fig 2 below), in the fastening region (Fig 3, #128), is provided with holes (holes that receive fasteners (Fig 3, #134) (col 8, lines 48-50)) through which the fastening elements (Fig 3, #14) lead.
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Brumm has been discussed above but does not explicitly teach
wherein the at least one vertical limb, in the fastening region but outside the holes, is provided with at least one structural weakening in form of an opening that extends as a slot substantially in a longitudinal direction of the rail and is arranged at a height closer to the horizontal limb than to an upper edge of the at least one vertical limb.
Schluter discloses a rail (Fig 1, #90) comprising a vertical limb (Fig 1, #92) and a horizontal limb (Fig 1, #94); wherein at least one vertical limb (Fig 1, #92), in a fastening region (annotated Fig 1 below) but outside holes (annotated Fig 1 below) (Fig 2, #18 & #30), is provided with at least one structural weakening (annotated Fig 1 below) (#95) in form of an opening (as shown in Fig 1) that extends as a slot (as shown in Fig 1) substantially in a longitudinal direction of the rail (Fig 1, #90) and wherein at least a bottom portion of the at least one structural weakening (annotated Fig 1 below) (#95) is arranged at a height closer to the horizontal limb (Fig 1, #94) than to an upper edge (top edge of #92) of the at least one vertical limb (Fig 1, #92).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form a structural weakening slot (Schluter, annotated Fig 1 above) (Schluter, #95) in a lower portion of the vertical limb (Brumm, annotated Fig 2 above) that is closer to the horizontal limb (Brumm, annotated Fig 2 above) than a top edge of the vertical limb (Brumm, annotated Fig 2 above) of Brumm and lower the fasteners (Brumm, Fig 3, #134) of Brumm in or near the fastening region (Brumm, Fig 3, #128) of Brumm in order to store more items on the rail (Brumm, Fig 2, #106) of Brumm as taught by Schluter (Schluter, [0022]). Further, the structural weakening slot (Schluter, annotated Fig 1 above) (Schluter, #95) of Schluter will make the rail (Brumm, Fig 2, #106) of Brumm more aesthetically appealing and reduce the weight of the rail (Brumm, Fig 2, #106) of Brumm.
Regarding claim 14, modified Brumm discloses the storage facility wherein the holes (Brumm, holes that receive fasteners #134) are arranged at partly different heights, and wherein the structural weakening (Schluter, annotated Fig 1 above) is arranged below a deepest of the holes (Brumm, holes that receive fasteners #134) through which a fastening element (Brumm, Fig 3, #134) leads.
Regarding claim 15, modified Brumm has been discussed above but does not explicitly teach the storage facility wherein the structural weakening is arranged between the holes which are closest to ends of the fastening region in the longitudinal direction of the rail.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the structural weakening (Schluter, annotated Fig 1 above) to be between the holes that receive the fasteners (Brumm, Fig 3, #134) since it has been held that rearranging parts of an invention involves only routine skill in the art. Further, the substitution of one known slot location for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Regarding claim 20, modified Brumm discloses the storage facility wherein the rail (Brumm, annotated Fig 2 above) has a second vertical limb (Brumm, Fig 3, #130) or (Brumm, Fig 3, #124 & #130), which is connected, facing downward or upward, to an end (right end) of the horizontal limb (Brumm, annotated Fig 2 above) which faces toward the aisle (Brumm, annotated Fig 2 above).
Regarding claim 22, modified Brumm discloses the storage facility wherein the structural weakening (Schluter, annotated Fig 1 above) has a largely rounded contour configured to or capable of reducing a notch effect at the structural weakening (Schluter, annotated Fig 1 above).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Brumm 11,084,622 and Schluter 2012/0305511; and further in view of Acker 4,119,208.
Regarding claim 13, modified Brumm has been discussed above but does not explicitly teach wherein the fastening elements are screw connections.
Acker discloses a storage facility (Fig 1) comprising rails (Fig 1, #1 & #2) that are attached to posts (Fig 1, #6) by screws (col 3, lines 11-12).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to replace the fasteners (Brumm, Fig 3, #134) with screws (Acker, col 3, lines 11-12) the substitution of one known fastener for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Brumm 11,084,622 and Schluter 2012/0305511; and further in view of Roberto 9,499,339.
Regarding claim 19, modified Brumm has been discussed above but does not explicitly teach wherein the rail has a second horizontal limb, which is connected to the
upper edge of the at least one vertical limb and is formed facing away from the aisle or facing toward the aisle.
Roberto discloses a storage facility wherein a rail (Fig 1, #4a) or (annotated Fig 1 below) has a second horizontal limb (annotated Fig 1 below), which is connected to an upper edge of the at least one vertical limb (annotated Fig 1 below) and is formed facing away from an aisle or facing toward the aisle (annotated Fig 1 below).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a second horizontal limb (annotated Fig 1 above) to at least a portion of the upper end of the vertical limb (Brumm, annotated Fig 2 above) of Brumm in order to make the rail (Brumm, Fig 2, #106) more aesthetically appealing.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Brumm 11,084,622 and Schluter 2012/0305511; and further in view of Gassner DE102014114978.
Regarding claim 21, modified Brumm has been discussed above but does not explicitly teach wherein the rail with its fastening region is arranged on a bracket via the fastening elements, wherein the bracket is fastened to one of the vertical supports and/or horizontal crosspieces.
Gassner discloses a rail mounting means (Fig 1) comprising a rail (Fig 1, #102) with a fastening region (annotated Fig 1 below) that is arranged on a bracket (annotated Fig 1 below) via fastening elements (Fig 1, #120), wherein the bracket (annotated Fig 1 below) is fastened to one of a vertical support (Fig 1, #100).
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It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach the fastening region (Brumm, Fig 3, #128) of Brumm to the vertical posts (Brumm, Fig 2, #102) via a bracket (Gassner, annotated Fig 1 above) as taught by Gassner in order to add a small spacing between the rail (Brumm, Fig 2, #106) and the vertical posts (Brumm, Fig 2, #102) and protect the rear portions of the rail (Brumm, Fig 2, #106) from becoming scratched or damaged by the vertical posts (Brumm, Fig 2, #102) during installation.
Allowable Subject Matter
Claims 16-18, and 23-25 are allowed.
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive.
Applicant’s arguments that “the Office Action expressly acknowledges that Brumm "does not explicitly teach" the claimed structural weakening. Rather, the Office Action relies on Schluter for the alleged slot and concludes that it would have been obvious to provide Brumm with such a slot in order to store more items on the rail, make the rail more aesthetically appealing, and reduce the weight of the rail. Applicant respectfully submits that this reasoning does not provide an articulated reason
with rational underpinning for modifying Brumm in the manner required by claim 12.
Brumm is directed to a storage system having rails for supporting and guiding carriers or vehicles. The relied-upon rail structure is not merely a decorative or non-load-bearing cover. It forms part of the load-bearing and guiding structure of the storage system. In claim 12, the horizontal limb of the rail forms the running surface for the carrier, and the fastening region of the rail is the region in which the rail is attached to the storage structure by fastening elements extending through holes in the vertical limb. Thus, the claimed structural weakening is not an arbitrary slot in an arbitrary sheet-metal part. It is a structural weakening in the vertical limb of a carrier rail, located in the fastening region, outside the fastening holes, and positioned closer to the horizontal limb forming the running surface than to the upper edge of the vertical limb” are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case, the examiner maintains that there is no distinguishing claim language that differentiates their structural weakening from the slot of Schluter. The examiner maintains that each slot of Schluter is a structural weakening because the slots weaken the rail of Schluter. The examiner maintains that the rail of Schluter would be stronger without the large slots.
The applicant’s arguments that “The cited rationales do not address this claimed arrangement. A general desire to store more items on a rail does not explain why a person of ordinary skill would introduce a structural weakening into the vertical limb of a rail that provides a running surface for a carrier. Likewise, making a rail more aesthetically appealing does not explain why the person of ordinary skill would provide a structural weakening in the fastening region of the rail, outside the fastening holes, and at the claimed height relative to the horizontal limb and the upper edge. Finally, a general desire to reduce weight is, at most, a generic reason to remove material somewhere. It does not explain why material would be removed specifically from the vertical limb of Brumm's carrier rail, in the fastening region, outside the fastening holes, and in the claimed slot-like form and position” are not persuasive.
The examiner maintains that each slot of Schluter is a structural weakening because the slots weaken the rail of Schluter. The examiner maintains that the rail of Schluter would be stronger without the large slots. The fact that the examiner has come up with different reasons and/or advantages for forming the structural weakening (Schluter, annotated Fig 1 above) on the rail (Brumm, annotated Fig 2 above) of Brumm
such as making the rail (Brumm, annotated Fig 2 above) of Brumm more aesthetically appealing or reducing the weight of the rail (Brumm, annotated Fig 2 above) of Brumm (i.e. reasons which would flow naturally from following the suggestion of the prior art) cannot be the basis for patentability over the combination of references.
The applicant’s arguments that “:Schluter does not cure this deficiency. Schluter concerns a different rail arrangement for mounting electronic components and discloses slots 95, 97 that can be used to mount various components on the rack rail. A component-mounting slot is not the claimed structural weakening. The claimed structural weakening is provided in the fastening region of a carrier rail, outside the holes through which the fastening elements lead, and is positioned relative to the running-surface-forming horizontal limb and the upper edge of the vertical limb. The proposed modification therefore would not merely apply a known slot to Brumm. It would require selecting a slot from Schluter, disregarding its disclosed mounting function, relocating or adapting it into the fastening region of Brumm's carrier rail, and placing it outside the fastening holes and at the claimed height. The Office Action does not provide a reason why a person of ordinary skill would have made these specific changes. The examiner maintains that the applicant’s claim language regarding the structural weaking in claim 12 only requires “the structural weakening” to be outside of the holes (i.e. anywhere between the left end region and the right end region (i.e. any where between the left and right fasteners #134 of Brumm) of the rail (Brumm, annotated Fig 1 above) of Brumm. The structural weakening also is required to be a slot that extends in a longitudinal direction of the rail (which Schluter does) and be arranged at a height closer to the horizontal limb than to an upper edge of the at least one vertical limb. As explained in the rejection of claim 12 above Schluter discloses at least one structural weakening (Schluter, annotated Fig 1 below) (Schluter, #95) in form of an opening (Schluter, as shown in Fig 1) that extends as a slot (Schluter, as shown in Fig 1) substantially in a longitudinal direction of the rail (Schluter, Fig 1, #90) and wherein at least a bottom portion of the at least one structural weakening (Schluter, annotated Fig 1 below) (#95) is arranged at a height closer to the horizontal limb (Schluter, Fig 1, #94) than to an upper edge (top edge of #92) of the at least one vertical limb (Schluter, Fig 1, #92). The examiner maintains that claim 12 does not require the entire structural weakening (i.e top and bottom most portions to be closer to the horizontal limb than to an upper edge of the least one vertical limb).
Applicant’s arguments that “The rejection also appears to use Applicant's disclosure as a roadmap. The claimed opening is not recited merely as an opening for receiving a fastener or other component. It is recited as a structural weakening in the rail's vertical limb. The Office Action's reasons of storing more items, improving aesthetics, and reducing weight do not address the problem solved by the claimed arrangement and do not explain why a person of ordinary skill would have weakened the rail at the claimed location. Without the teachings of the present application, there is no apparent reason to modify Brumm's carrier rail to include the claimed structural weakening.
Applicant’s arguments that “The Examiner further appears to rely on an additional modification of Brumm by relocating fastening elements in or near the fastening region. This confirms that the rejection is not based on a simple substitution of one known element for another. Instead, the rejection requires multiple coordinated modifications: the rail fastening arrangement of Brumm must be modified, a slot from Schluter must be introduced, the slot must be placed in the fastening region
but outside the fastening holes, and the slot must be located closer to the horizontal limb forming the running surface than to the upper edge of the vertical limb. The Office Action has not provided an articulated reason why a person of ordinary skill would have made this particular combination of modifications. Accordingly, Brumm and Schluter, whether considered individually or in combination, fail to teach or suggest the structural weakening recited in independent claim 12. Claim 12 is therefore patentable over Brumm in view of Schluter” are not persuasive.
The examiner maintains that In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Brumm and Schluter would have readily understood how the slots of Schulter would be formed in the vertical limb (Brumm, annotated Fig 2 above) of the rail (Brumm, Fig 2, #106) of Brumm without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Applicant’s arguments that “Claim 15 is separately patentable because it further recites that the structural weakening is arranged between the holes which are closest to ends of the fastening region in the longitudinal direction of the rail. The Office Action characterizes this as a mere rearrangement of parts or substitution of one known position for another. Applicant respectfully disagrees. The claimed location is not an arbitrary position of an opening. It is a specific location of the structural weakening relative to the fastening holes in the fastening region of the rail. The rejection does not identify any teaching or suggestion in Brumm or Schluter that would have led a person of ordinary skill to arrange a structural weakening between the end-nearest holes of the fastening region. Nor does the rejection explain why such a specific location would have been selected for one of the generic purposes identified in the Office Action. Claim 15 is therefore patentable for this additional reason” are not persuasive,
The examiner maintains that the structural weakening (Schluter, annotated Fig 1 above) of modified Brumm is between the holes #134 of modified Brumm. Further,
it has been held that rearranging parts of an invention involves only routine skill in the art.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Liu can be reached at 571-272-8227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEVIN K BARNETT/Primary Examiner, Art Unit 3631
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