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
Claims 1, 11, and 17 are objected to because of the following informalities:
Claim 1 reads “a plurality of shelves within the storage compartment, the plurality of shelves with the storage compartment are configured to, in operation, moved between an opened position and a closed position, each respective shelf of the plurality of shelfs includes” The use of the past tense here is grammatically incorrect and the claim should read “move between” and “shelfs” should be corrected to reads ”shelves”. Appropriate correction is required.
Claim 11 reads “a retainment structure”, however the word retainment does not appear in the specification. The examiner believes that this should read “retention structure”.
Claim 17 reads ”placing the storage carrier on the shelf utilizing the forking robot by passing the support structure of the forking robot through the forking robot opening in the shelf removing the storage carrier from the shelf including passing the forking robot through the forking robot opening in a second direction opposite the fist direction. The examiner believes that this should read ”placing the storage carrier on the shelf”.
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:
“retention structure” in claim 4 and “retainment structure” in claim 11.
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 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 1-9 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 1 recites the limitation "the storage compartment" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the plus-shape support" in 16. There is insufficient antecedent basis for this limitation in the claim.
Double Patenting
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 6, 7, and 8 of U.S. Patent No. 12, 176,228 in view of Lucey et al. (US 9,351,569) in view of Abe et al. (US 2018/0076059).
Regarding claim 1, claim 1 of Fan et al. ‘228 recites a stocker (col. 23, line 31), a storage compartment (col. 23, line 33), a plurality of shelves (col 23, line 35), a plurality of storage carriers (col. 23, line 36), a forking robot (col. 23, line 52), a support structure (col. 23, line 53), a plurality of boundary walls (col. 23, line 58), and a hook (col. 23, line 62).
Claim 1 of Fan et al. ‘228 lacks the shelves being movable between an opened and closed position. Lucey et al. teaches a pull out shelf, 45A-C, within a storage compartment, 40, to be moved between an opened and closed position, see figures 3A through 3C. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shelves of Fan et al. ‘228 with the openable and closable shelves of Lucey et al. in order to enable items stored on the shelves to be easily access when the shelves are pulled out from the storage compartment.
Claim 1 of Fan et al. ‘228 lacks the respective forking robot openings as claimed. Abe et al. teaches a stocker including a plurality of shelves which include robot openings, see empty middle space of shelf in 4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shelves of Fan et al. ‘228 with the openings taught by Abe et al. in order to enable the forking robot to easily lift and support the storage carriers to remove the carriers from the shelves.
Regarding claim 2, claim 1 of Fan et al. ‘228 recites a first surface (col. 23, line 40), a second surface (col. 23, line 42), a first dimension (col. 23. line 45).
Regarding claim 3, claim 1 of Fan et al. ‘228 recites a plurality of gaps (col 23., line 47).
Regarding claim 4, claim 5 of Fan et al. ‘228 recites a clamp to hold the storage carriers on a plus-shaped support structure. Therefore, patent claim 5 of Fan et al. ‘228 is in essence a “species” of the generic invention of claim 4, which recites a retention structure. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding claim 5, claim 5 of Fen et al. ‘228 recites a clamp to hold the storage carriers on a plus-shaped support structure.
Regarding claim 6, claim 1 of Fan et al. ‘228 recites the forking robot includes a plus-shape support (col. 23, line 53).
Claim 1 of Fan et al. ‘228 lacks the respective forking robot openings as claimed. Abe et al. teaches a stocker including a plurality of shelves which include robot openings that match the shape of the robot, see empty middle space of shelf in 4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shelves of Fan et al. ‘228 with the openings taught by Abe et al. in order to enable the forking robot to easily lift and support the storage carriers to remove the carriers from the shelves.
Regarding claim 7, claim 6 of Fan et al. ‘228 recites the one or more slide rails.
Regarding claim 8, claim 7 of Fan et al. ‘228 recites the first position is a retracted position and the second position is an extended position.
Regarding claim 9, claim 8 of Fan et al. ‘228 recites the RFID structure.
Claims 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 of U.S. Patent No. 12,176,228 in view of Abe et al. (US 2018/0076059).
Regarding claim 15, claim 15 of Fan et al. ‘228 recites pulling a shelf from a closed position to an opened position using a hook of a forking robot (col. 25, line 35), removing a storage carrier (col. 26., line 1), transporting the storage carrier (col. 26, line4). Patent claim 15 of Fan et al. ‘228 recites pulling and pushing rather than the generic moving. Therefore, patent claim 15 of Fan et al. ‘228 is in essence a “species” of the generic invention of claim 15, which recites moving a shelf. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 15 of Fan et al. ‘228 lacks the respective forking robot openings as claimed. Abe et al. teaches a stocker including a plurality of shelves which include robot openings, see empty middle space of shelf in 4. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the shelves of Fan et al. ‘228 with the openings taught by Abe et al. in order to enable the forking robot to easily lift and support the storage carriers to remove the carriers from the shelves.
Regarding claim 16, claim 15 of Fan et al. ‘228 recites placing the storage carrier on the shelf (col. 26, line 13). Claim 15 of Fan et al. ‘228 lacks the forking robot passing through the forking robot opening in the shelf placing the storage carrier on the shelf. Abe et al. teaches passing the forking robot through the opening to place a storage carrier on the shelf, see paragraphs 0037-0042.
Regarding claim 17, claim 15 of Fan et al. ‘228 teaches removing the storage carrier on the shelf by utilizing the forking robot (col. 26, line 1) and placing the storage carrier on the shelf (col. 26 line 13). Abe et al. teaches passing the forking robot through the opening to place and remove a storage carrier on the shelf, see paragraphs 0037-0042.
Regarding claim 18, claim 20 of Fan et al. ‘228 recites scanning a RFID structure.
Regarding claim 19, claim 15 of Fan et al. ‘228 recites pulling a shelf from the closed to opened position (col. 25, line 35) and pushing the shelf form the opened to closed position (col. 26, line 15). Patent claim 15 of Fan et al. ‘228 recited pulling and pushing rather than the generic moving. Therefore, patent claim 15 of Fan et al. ‘228 is in essence a “species” of the generic invention of claim 15, which recites moving a shelf. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding claim 20, claim 15 of Fan et al. ‘228 recites a hook of a forking robot and pulling a shelf with the hook (col. 25, line 35) and moving the shelf from the opened to the closed position (col. 26, line 15).
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(s) 10, 15-17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 2018/0076059) in view of Lucey et al. (US 9,351,569).
Regarding claim 10, Abe teaches a forking robot, comprising:
a support structure, 3, configured to, in operation, be passed through a plurality of forking robot openings in corresponding ones of a plurality of shelves, 9, to place a storage carrier, 6, onto the corresponding one of the plurality of shelfs or remove the storage carrier from the corresponding one of the plurality of shelves when transporting the storage carrier to and from the corresponding one of the plurality of shelves;
a plurality of boundary wall structures, 3P, coupled to the support structure, and the plurality of wall structures configured to, in operation, maintain a position of the storage carrier when the storage carrier is present on the support structure; see figure 4 and paragraphs 0037 through 0042.
Abe does not teach a hook coupled to the support structure, the hook configured to, in operation, engage with engagement structures of the plurality of shelves to move the corresponding one of the plurality of shelves between a first position and a second position.
Lucey et al. teaches a pull out shelf, 45A-C, within a storage compartment, 40, to be moved between a first and second position, see figures 8A through 8C, using a hook of a robot arm, see robot arm hook attached to shelf bar, 451.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the pull out shelf and hook of Lucey et al. with the forking robot of Abe in order to enable the shelves to be movable by the robot between a opened and closed position to allow for the robot to more easily pass through the openings of the shelf remove or place the storage carrier on the shelf.
Regarding claim 15, Abe teaches a method, comprising:
removing a storage carrier from the shelf utilizing the forking robot by passing a support structure of the forking robot through a forking robot opening in the shelf removing the storage carrier from the shelf; and
transporting the storage carrier to another location with the forking robot, see paragraphs 0037 through 0042.
Abe does not teach moving a shelf between a closed position and an opened position utilizing a forking robot. Lucey et al. teaches a pull out shelf, 45A-C, within a storage compartment, 40, to be moved between a first and second position, see figures 8A through 8C, using a hook of a robot arm, see robot arm hook attached to shelf bar, 451.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the pull out shelf and hook of Lucey et al. with the forking robot of Abe in order to enable the shelves to be movable by the robot between a opened and closed position to allow for the robot to more easily pass through the openings of the shelf remove or place the storage carrier on the shelf.
Regarding claim 16, Abe teaches placing the storage carrier on the shelf utilizing the forking robot by passing the support structure of the forking robot through the forking robot opening in the shelf placing the storage carrier on the shelf, see paragraphs 0037 through 0042.
Regarding claim 17, Abe teaches:
removing the storage carrier on the shelf utilizing the forking robot by passing support structure of the forking robot through the forking robot opening in the shelf removing the storage carrier from the shelf including passing the forking robot through the forking robot opening in a first direction; and
placing the storage carrier on the shelf utilizing the forking robot by passing the support structure of the forking robot through the forking robot opening in the shelf placing the storage carrier on the shelf including passing the forking robot through the forking robot opening in a second direction opposite to the first direction, see paragraphs 0037 through 0042.
Regarding claim 19, Lucey et al. teaches moving the shelf from the closed position and the opened position utilizing the forking robot further includes:
moving the shelf from the closed position to the opened position; and
moving the shelf from the opened position to the closed position, see figures 8A through 8C.
Regarding claim 20, Lucey et al. teaches:
moving the shelf from the closed position to the opened position further includes:
engaging a hook of the forking robot with the shelf; and
pulling on the shelf with the hook from the closed position to the opened position;
moving the shelf from the opened position to the closed position further includes:
engaging the hook of the forking robot with the shelf; and
pushing on the shelf with the hook from the opened position to the closed position, see figures 8A through 8C.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 2018/0076059) in view of Lucey et al. (US 9,351,569) as applied to claim 10 above, and further in view of Suzuki et al. (US 2024/0112929).
Regarding claim 11, Abe does not teach a retainment structure, as claimed.
Suzuki et al. teaches a forking robot with a support structure, 113, and a retainment structure, 135 and 138, configured to move between a first position and a second position, see figures 6-8 and paragraphs 0205-0211.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the retainment structure of Suzuki et al. with the forking robot of Abe in order to help securely holding the storage carrier onto the forking robot support with the retainment arms, 135 and 138.
Regarding claim 12, Suzuki et al. further teaches: the first position is a release position in which the storage carrier is removable from the support structure; and the second position is a retainment position in which the retainment structure contacts the storage carrier and retains the storage carrier on the support structure, see paragraph 0250 through 0211.
Regarding claim 13, Suzuki et al. teaches:
the retainment structure is a clamp;
in the retainment position, the clamp clamps down onto the storage carrier to retain the storage carrier on the support structure; and
in the release position, the clamp is released from the storage carrier and is spaced apart from the storage carrier allowing the storage carrier to be removed from the supporting structure, see figures 6-8 and paragraphs 0205 through 0211.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe et al. (US 2018/0076059) in view of Lucey et al. (US 9,351,569) as applied to claim15 above, and further in view of Kuo et al. (US 2021/0272837).
Regarding claim 18, neither Abe nor Lucey teach scanning a radio frequency identification structure on the storage carrier, as claimed. Kuo teaches a stocker and system including carriers with a RFID structure maintain records of a workpiece within the storage carrier, see paragraph 0051. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to combine the RFID of Kuo et al. with the method taught by the combination of Abe and Lucey in order to identify the carriers as they are transported and stored in the system.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The prior art was not found to teach the specific “plus-shaped support” as claimed and there is no motivation to modify the prior art to teach such a limitation.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Prior art cited on the PTO-892 and not relied upon are included to show the general state of the prior art. US 2018/0076079 and US 2020/0264506 are other stocker systems with robots to transport carriers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAITLIN S JOERGER whose telephone number is (571)272-6938. The examiner can normally be reached M-F 7:30-5 (CST).
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KAITLIN S JOERGER/ Primary Examiner, Art Unit 3655
16 September 2026
Prosecution Insights