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
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 and 4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 18 of U.S. Patent No. 12,202,672. Although the claims at issue are not identical, they are not patentably distinct from each other because the issued claims contain all the limitations of the pending claims but vary in scope due to additional recited limitations.
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 2-5, 7 and 9-13 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 includes “the breaks comprise one or more aisles of stacks of containers.” This renders the claim indefinite as based on claim 1 it is the missing containers (or lack of containers) that forms the breaks but claim 2 suggests it is an aisle of stacks of containers. Clarification is necessary. It seems that the claim may be intended to claim an empty aisle but this is not clear from the claim as drafted. Prior art has not been applied to claim 2 and 9-13 (which depend from claim 2) but as best understood Hognaland (discussed below) would apply to claim 2 and claims 9-13 would be treated consistent with those claims to which they correspond (3-5 and 6, 8) as they are treated below.
Claims 3 and 9 include “the stacks of containers are arranged within the vertical storage locations according to a structure of the containers.” This is unclear as it is not apparent what if anything is required by the claim. As understood the containers are stacked one on top of another but it is not clear what, if anything, additional is required by the language of claims 3 and 9.
Claim 7 includes “load handling devices to remove sections of storage system adjacent a fire so as to prevent the spread of any fire and to enable access to the storage system.” This in unclear as the load handling devices move containers rather than “sections of the storage system.” It appears the claim should read “load handling devices to remove containers from sections of storage system. . . .” Clarification is necessary.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1, 3-4 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2016/0325932 to Hognaland.
Regarding claim 1 Hognaland discloses a storage system comprising: containers
stacked in stacks within a framework structure (see 2 and figure 1); the framework structure including a plurality of upright members arranged to form a plurality of vertical storage locations for one or more containers to be stacked between the upright members and be guided by the upright member in a vertical direction (see figures 2 and 4), the plurality of upright members being interconnected at their top ends by a first set of tracks extending in a first direction and a second set of tracks extending in a second direction, the second set of grid members running transversely of the first set of grid members in a substantially horizontal plane to form a grid structure comprising a plurality of grid cells (see figures 2 and 5), wherein each stack of containers is located in one of the plurality of vertical storage locations (see figures 2, 4 and 5), wherein the stacks of containers are arranged in rows, and wherein the storage system includes breaks that are formed from missing rows of stacks of containers (see figure 9 below charging stations 20).
Regarding claim 3 Hognaland discloses the stacks of containers are arranged within the vertical storage locations according to a structure of the containers (see figure 1, containers stacked on one another).
Regarding claim 4 it is noted that the articles handled (aka contents of the containers) do not generally limit an apparatus claim. See MPEP 2115. The contents of the containers do not limit the structure of them and Hognaland is capable of storing all such contents. Furthermore, such ASRS are customarily used for order picking and inventory management operations.
Regarding claim 8 Hognaland discloses one or more load handling devices (1) and a control system (para 0002), said control system being configured to instruct the load handling device to remove stacks of containers in the event of an incident (when removing for instance the bottom container of a stack it is necessary to remove the rest of the stack to access the container, this reads on the claim as the “incident” can be a request to retrieve the bottom item of a stack).
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hognaland.
Hognaland further discloses one or more load handling devices (1) and a control system, said control system being configured to instruct the one or more load handling devices to arrange containers within the vertical storage locations (see para 0002) but is silent regarding the control system being configured to instruct the one or more load handling devices to arrange containers within the vertical storage locations such that the arrangement of containers creates a partitioned storage system according to inventory items stored in the containers.
That said, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of Applicants’ claim to have modified Hognaland to include the control system being configured to instruct the one or more load handling devices to arrange containers within the vertical storage locations such that the arrangement of containers creates a partitioned storage system according to inventory items stored in the containers because it is well known to organize stored items according to their contents. See MPEP 2143.03. For instance, it is well known to locate high volume items where they are more accessible to increase efficiency as well as to locate items according to storage needs (storage temperature etc.).
Allowable Subject Matter
Claim 6 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 following is a statement of reasons for the indication of allowable subject matter: the control system instructing the movement of stacks of containers by the load handling devices in response to a fire differentiates the claim from the prior art when considered in combination with the other limitations of the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Additional cited references show other storage arrangements with intentional gaps provided therein.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK C HAGEMAN whose telephone number is (571)272-5547. The examiner can normally be reached Mon-Fri 8:15-4:45 (PST).
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, Saul Rodriguez can be reached at 571-272-7097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK C HAGEMAN/Primary Examiner, Art Unit 3652
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