The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The information disclosure statement filed 8/09/24 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature (NPL) publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
This applies to NPL document number 495 only. All other references have been considered.
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 2-4 and 7-14 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.
Claim 2 recites “the second wheel rotates about a second wheel axis, and the second wheel axis is parallel to the wheel axis”, while claim 3, which depends from claim 2, recites “the second wheel axis is aligned with the wheel axis”. It is believed that applicant’s intent was to recite the second wheel axis as being colinear with the wheel axis. However, the term colinear does not further limit parallel, as these are mutually exclusive limitations. Correction and/or clarification is required.
Claim 4, lines 2-3, the recitation that the container engaging system “engages”, “lifts” and “moves” the selected one of the containers is not understood in the context of an apparatus claim, as such terminology implies the performance of an action, as would typically be associated with a method claim. However, an apparatus is defined by what it is, not by what it does. It is suggested that intended use or other functional language, such as --configured to-- or --capable of--, be utilized (e.g., as in claims 6 and 9).
This also applies to similar issues in claims 7, 8 and 11-14 (i.e., “engages”, “extends”, “retracts”).
Claims 9-10 are not indefinite per se but are included due to their dependency on claim 8.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,006,149 in view of Muranaka (JP H06-42810, cited by applicant).
Pending claim 1 recites:
“An automated storage-and-retrieval system, comprising:
a multi-level storage structure comprising a plurality of racks separated by aisles, each rack comprising a set of horizontal container supports each configured to store a container of multiple containers, which hold objects therein, at a plurality of storage levels within each aisle, and a set of inclined or vertical tracks disposed between and connecting levels of the multi-level storage structure;
a first set of vertical load bearing features on a first inclined or vertical track of the set of inclined or vertical tracks;
a second set of vertical load bearing features on a second inclined or vertical track of the set of inclined or vertical tracks spaced from the first set of vertical load bearing features, the first and second sets of vertical load bearing features facing each other across a first aisle of the aisles; and
a mobile robot configured to transport a selected one of the multiple containers to and from the multi-level storage structure, the mobile robot comprising:
a caster wheel;
a first traction drive and a second traction drive, the first traction drive comprises a first motor and a first wheel driven by the first motor, and the second traction drive comprises a second motor and a second wheel driven by the second motor, wherein the first wheel rotates about a wheel axis, wherein the first and second wheels and the caster wheel are configured to contact a common horizontal surface supporting the mobile robot permitting steering and configured to turn the mobile robot using the first wheel and the second wheel while on the common horizontal surface with the first traction drive controlled to drive fore or aft the first wheel and the second traction drive controlled to drive fore and/or aft the second wheel while operating on the common horizontal surface including enabling the mobile robot to move across the common horizontal surface; and
a first sprocket or pinion on a first side of the mobile robot, and a second sprocket or pinion on a second side of the mobile robot opposite the first side, the first and second sprockets or pinions having a retracted position and an extended position;
the first sprocket or pinion having a first rotation axis, and the second sprocket or pinion having a second rotation axis, wherein the first and second rotation axes are each perpendicular to the wheel axis;
wherein the first and second sprockets or pinions are configured to selectively engage the set of inclined or vertical tracks of the multi-level storage structure while in the extended position, and propel the mobile robot vertically along the set of inclined or vertical tracks of the multi-level storage structure such that the mobile robot is configured to move vertically to any of the plurality of storage levels of the multi-level storage structure between a bottom storage level and a top storage level;
at least one extension motor configured to extend and retract at least one of the first sprocket or pinion and the second sprocket or pinion between the extended position and the retracted position; and
a container transfer system comprising a transfer motor that is configured to drive a container engaging system to load the selected one of the multiple containers onto and off of a payload bay of the mobile robot, wherein the payload bay is configured to support the selected one of the multiple containers;
wherein the first and second sprockets or pinions are configured to engage the first and second sets of vertical load bearing features by rotating oppositely of each other about the first rotation axis and the second rotation axis.”
Patented claim 1 recites:
“An automated storage-and-retrieval system, comprising: a multi-level storage structure comprising a plurality of racks separated by aisles, each rack comprising a set of horizontal container supports configured to store containers, which hold objects therein, at a plurality of storage levels within each aisle, and a set of inclined or vertical tracks disposed between and connecting levels of the multi-level storage structure;
a first set of vertical load bearing features on a first inclined or vertical track of the set of inclined or vertical tracks; and
a second set of vertical load bearing features on a second inclined or vertical track of the set of inclined or vertical tracks spaced from the first set of vertical load bearing features across an aisle of the aisles, the first and second sets of vertical load bearing features facing each other across the aisle along a third axis perpendicular to a first axis;
a mobile robot configured to transport a selected one of the containers to and from the multilevel storage structure, the mobile robot comprising:
a caster wheel;
a first traction drive and a second traction drive, the first traction drive comprises a first motor and a first wheel driven by the first motor, and the second traction drive comprises a second motor and a second wheel driven by the second motor, wherein the first and second wheels and the caster wheel are configured to contact a common horizontal surface supporting the mobile robot permitting steering and configured to turn the robot using the first wheel and the second wheel while on the horizontal surface with the first traction drive controlled to drive fore or aft the first wheel and the second traction drive controlled to drive fore and/or aft the second wheel while operating on the horizontal surface including enabling the mobile robot to move across the horizontal surface; and
a first sprocket or pinion on a first side of the mobile robot, and a second sprocket or pinion on a second side of the mobile robot opposite the first side, the first and second sprockets or pinions having a retracted position and an extended position;
the first and second sprockets or pinions having axes of rotation parallel to the first axis and configured to selectively engage at two positions of the set of inclined or vertical tracks of the multi-level storage structure while in the extended position, and propel the mobile robot along a second axis along the inclined or vertical tracks of the multi-level storage structure;
first and second passive followers having axes of rotation parallel to the first axis, the first and second passive followers configured to engage the first and second tracks of the set of inclined or vertical tracks;
wherein the first and second sprockets or pinions are configured to engage the first and second sets of vertical load bearing features by moving oppositely of each other along the third axis.”
Thus, discounting minor, insignificant and patentably indistinct differences in terminology, all of the limitations of pending claim 1 are encompassed within the scope of the patented claim except for the following:
a) “each rack comprising a set of horizontal container supports each configured to store a container of multiple containers”;
b) “wherein the first wheel rotates about a wheel axis”;
c) “wherein the first and second rotation axes are each perpendicular to the wheel axis”;
d) “propel the mobile robot vertically along the set of inclined or vertical tracks of the multi-level storage structure such that the mobile robot is configured to move vertically to any of the plurality of storage levels of the multi-level storage structure between a bottom storage level and a top storage level”;
e) “at least one extension motor configured to extend and retract at least one of the first sprocket or pinion and the second sprocket or pinion between the extended position and the retracted position”;
f) “a container transfer system comprising a transfer motor that is configured to drive a container engaging system to load the selected one of the multiple containers onto and off of a payload bay of the mobile robot, wherein the payload bay is configured to support the selected one of the multiple containers”;
g) wherein the first and second sprockets or pinions are configured to engage the first and second sets of vertical load bearing features by rotating oppositely of each other about the first rotation axis and the second rotation axis”.
However, it is believed that one of ordinary skill in the art would have deemed each of these limitations to be inherent and/or implicit in the patented claim. For example, at least limitation “b” is clearly inherent. Further, since the patented claim recites “the first and second sets of vertical load bearing features facing each other across the aisle along a third axis perpendicular to a first axis” and “the first and second sprockets or pinions ... propel the mobile robot along a second axis along the inclined or vertical tracks of the multi-level storage structure”, it is implicit that the first axis would be a horizontal axis along the aisle. Since patented claim 1 further recites “first and second passive followers having axes of rotation parallel to the first axis”, limitation “c” is implicit, because the “wheel axis” of the pending claim would necessarily be equivalent to the “third axis” (again, which is perpendicular to the first axis) of the patented claim, and thus reciting that “the first and second rotation axes are each perpendicular to the wheel axis” is merely a different way of reciting “the first and second sprockets or pinions having axes of rotation parallel to the first axis”. In the same manner, limitation “g” is also implicit, because rotating about the first and second axes of the pending claim would be equivalent to rotating about axes of rotation parallel to the first axis of the patented claim. Further still, limitations “a” and “d” are considered implicit in the patented claim, insofar as the claim recites “a multi-level storage structure comprising a plurality of racks separated by aisles, each rack comprising a set of horizontal container supports configured to store containers ... at a plurality of storage levels within each aisle, and a set of inclined or vertical tracks disposed between and connecting levels of the multi-level storage structure”, “a mobile robot configured to transport a selected one of the containers to and from the multilevel storage structure”, and “first and second sprockets or pinions ... [which] propel the mobile robot ... along the inclined or vertical tracks of the multi-level storage structure”. As such, it is considered implicit that the set of horizontal container supports would each be configured to store a container of multiple containers, and that the robot would be propelled vertically along the set of inclined or vertical tracks of the multi-level storage structure to move vertically to any of the plurality of storage levels of the multi-level storage structure between a bottom storage level and a top storage level. Finally, limitations “e” and “f” are considered implicit insofar as the patented claim recites “the first and second sprockets or pinions having a retracted position and an extended position” and “a mobile robot configured to transport a selected one of the containers to and from the multilevel storage structure”, and thus it is considered implicit that there would be “at least one extension motor configured to extend and retract at least one of the first sprocket or pinion and the second sprocket or pinion between the extended position and the retracted position” and “a container transfer system comprising a transfer motor that is configured to drive a container engaging system to load the selected one of the multiple containers onto and off of a payload bay of the mobile robot, wherein the payload bay is configured to support the selected one of the multiple containers”.
Notwithstanding the above, to the extent any or all of these limitations may not be considered inherent and/or implicit within the scope of patented claim 1, Muranaka shows an automated storage-and-retrieval system, comprising:
a multi-level storage structure comprising a plurality of racks 2 separated by aisles 9, each rack comprising a set of horizontal container supports 5 each configured to store a container of multiple containers W (limitation “a”), which (clearly could) hold objects therein, at a plurality of storage levels (Fig. 2) within each aisle, and a set of inclined or vertical tracks 3 disposed between and connecting levels of the multi-level storage structure;
a first set of vertical load bearing features 19 on a first inclined or vertical track of the set of inclined or vertical tracks;
a second set of vertical load bearing features 19 on a second inclined or vertical track of the set of inclined or vertical tracks spaced from the first set of vertical load bearing features, the first and second sets of vertical load bearing features facing each other across a first aisle of the aisles (Figs. 3-6); and
a mobile robot 16 configured to transport a selected one of the multiple containers to and from the multi-level storage structure, the mobile robot comprising:
a first traction drive 28 and a second traction drive 28, the first traction drive comprises a first motor (not explicitly identified but “a small motor” is disclosed) and a first wheel driven 32 by the first motor, and the second traction drive comprises a second motor (again, not explicitly identified but disclosed) and a second wheel 32 driven by the second motor, wherein the first wheel rotates about a wheel axis (limitation “b”; not explicitly identified but readily apparent in Figs. 3-6); and
a first sprocket or pinion 25 on a first side of the mobile robot, and a second sprocket or pinion 25 on a second side of the mobile robot opposite the first side, the first and second sprockets or pinions having a retracted position (Figs. 6, 8) and an extended position (Figs. 3-5);
the first sprocket or pinion having a first rotation axis (not explicitly identified but readily apparent in Figs. 3-6), and the second sprocket or pinion having a second rotation axis (not explicitly identified but readily apparent in Figs. 3-6), wherein the first and second rotation axes are each perpendicular to the wheel axis (limitation “c”);
wherein the first and second sprockets or pinions are configured to selectively engage the set of inclined or vertical tracks of the multi-level storage structure while in the extended position, and propel the mobile robot vertically along the set of inclined or vertical tracks of the multi-level storage structure such that the mobile robot is configured to move vertically to any of the plurality of storage levels of the multi-level storage structure between a bottom storage level and a top storage level (limitation “d”; Fig. 2);
at least one extension motor 23 configured to extend and retract at least one of the first sprocket or pinion and the second sprocket or pinion between the extended position and the retracted position (limitation “e”); and
a container transfer system comprising a transfer motor (not explicitly identified but considered inherent) that is configured to drive a container engaging system (i.e., slide fork 17, which is disclosed as “putting the article W into/from the travelling vehicle 16, thereby drawing the article into the travelling vehicle”) to load the selected one of the multiple containers onto and off of a payload bay of the mobile robot, wherein the payload bay is configured to support the selected one of the multiple containers (limitation “f”);
wherein the first and second sprockets or pinions are configured to engage the first and second sets of vertical load bearing features by rotating oppositely of each other about the first rotation axis and the second rotation axis (limitation “g”).
As such, to whatever if any extent the limitations may be deemed to not be inherent and/or implicit within the scope of patented claim 1, it would have been obvious for one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified the apparatus recited in patented claim 1 by configuring the set of horizontal container supports such that they were each configured to store a container of multiple containers, by configuring the first wheel such that it rotated about a wheel axis and the first and second rotation axes (of the respective first and second sprockets or pinions) were each perpendicular to the wheel axis, by configuring the first and second sprockets or pinions to propel the mobile robot vertically along the set of inclined or vertical tracks of the multi-level storage structure such that the mobile robot was configured to move vertically to any of the plurality of storage levels of the multi-level storage structure between a bottom storage level and a top storage level, by providing at least one extension motor configured to extend and retract at least one of the first sprocket or pinion and the second sprocket or pinion between the extended position and the retracted position, by providing a container transfer system comprising a transfer motor that was configured to drive a container engaging system to load the selected one of the multiple containers onto and off of a payload bay of the mobile robot, wherein the payload bay was configured to support the selected one of the multiple containers, and by configuring the first and second sprockets or pinions to engage the first and second sets of vertical load bearing features by rotating oppositely of each other about the first rotation axis and the second rotation axis, as shown by Muranaka, as these are simply well known features of a substantially similar automated storage and retrieval system which would have provided enhanced and effective operation thereof without requiring undue experimentation or producing unexpected results.
The above analysis applies equally to pending independent claims 15 and 19 over independent claims 13 and 17 of the Patent in view of Muranaka.
Re claims 2 and 3 (as best understood in light of the rejection under 35 U.S.C. 112 set forth above in par. 5), the limitations are considered inherent/implicit within claim 1 of the Patent and/or obvious in view of Muranaka.
Re claim 4 (as best understood in light of the rejection under 35 U.S.C. 112 set forth above in par. 5), Muranaka discloses that the container engaging system engages the selected one of the multiple containers, lifts the selected one of the multiple containers, and moves the selected one of the multiple containers into and out of the payload bay. Such features would obviously be included in the apparatus of patented claim 1 when modified as above.
Each of pending dependent claims 5, 6-14, 16-18 and 20 is wholly encompassed within the scope of claims 2, 4-12, 14-16 and 18, respectively, of the Patent.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Keenan whose telephone number is (571)272-6925. The examiner can normally be reached Mon. - Thurs.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ernesto Suarez can be reached at 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James Keenan/
Primary Examiner
Art Unit 3652
7/15/26
Prosecution Insights