Ex Parte Gerber et al

Patent Trial and Appeal Board

Aug 29, 2016

12954227 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/954,227 11/24/2010
24131 7590 08/31/2016
LERNER GREENBERG STEMER LLP
PO BOX 2480
HOLLYWOOD, FL 33022-2480
FIRST NAMED INVENTOR
URS GERBER
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
WTH-69161 4980
EXAMINER
MEKHAEIL, SHIREF M
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
08/31/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URS GERBER and KONRAD EBERLE
Appeal2014-006223
Application 12/954,227 1
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
BRADLEY B. BAY AT, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-13. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to the Appellants, the real party in interest is the "assigne[ e]
L TW Intralogistics GmbH of Wolfurt, Austria." Appeal Br. 1.
Appeal2014-006223
Application 12/954,227
Claimed Subject Matter
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A configuration, comprising:
a coupling mechanism for releasably closing a door of a
rack store, the door being guided on rails;
an uncoupling and displacing device for opening the door,
said coupling mechanism can be moved from a closed position
into an open position and the door can be displaced between a
closed position and an open position; and
a closure sensor monitoring the closed position of said
coupling mechanism, said closure sensor being movable
relatively to the rails.
Rejections
Claims 1-5, 7, and 10-13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerber (EP 1,696,095 A2, pub. Aug. 30, 2006) and
DeLeonardis (US 2009/0284024 Al, pub. Nov. 19, 2009).
Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Gerber, DeLeonardis, and Block (US 4,872,287, iss. Oct. 10, 1989).
Claims 8 and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gerber, DeLeonardis, and Lei (US 7,355,394 B2, iss. Apr. 8, 2008).
ANALYSIS
Independent claim 1 and dependent claims 2-5, 7, 10, and 11
The Examiner finds that Gerber discloses substantially all of the
limitations of claim 1, including "an uncoupling and displacing device (24),"
but fails to teach "[a] movable closure sensor." Final Act. 2-3. Stated
otherwise, the Examiner finds that Gerber fails to disclose, "a closure sensor
monitoring the closed position of said coupling mechanism, said closure
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Application 12/954,227
sensor being movable relatively to the rails," as recited in claim 1. The
Examiner relies on DeLeonardis to remedy part of this deficiency with
regard to claim 1 by finding that DeLeonardis teaches "[a] closure sensor
(23) monitoring the closed position of said coupling mechanism." Final
Act. 3; see DeLeonardis, Fig. 2, paras. 29, 30. The Examiner does not find
that DeLeonardis discloses a closure sensor being movable relatively to the
rails.
To remedy this deficiency, the Examiner appears to determine that as
a result of the combined teachings of Gerber and DeLeonardis that a closure
sensor would have been placed on a movable member of Gerber's device,
i.e., Gerber's uncoupling and displacing device 24. See Final Act. 2, 3; see
also Gerber, Fig. 3d. More specifically, the Examiner determines that:
DeLeonardis also teaches sensor (23) being part of a locking
mechanism, which is the main mechanism of the reference,
hence making the sensor (23) part of the uncoupling and
displacing device of Gerber's configuration would only require
attaching it to a similar acting mechanism.
Final Act. 3.
The Appellants argue that the Examiner's rejection of independent
claim 1 suffers from impermissible hindsight. Appeal Br. 6. The Appellants
assert that DeLeonardis's closure sensor 23 is not movable (i.e., static) and is
only used for one door. Appeal Br. 5; see also DeLeonardis, para. 30
(describing that "each door close sensor 23 [is] configured to detect one of
the doors 44."). The Appellants also assert that DeLeonardis's closure
sensor 23 is not suitable to be made mobile. Appeal Br. 6. The Appellants'
argument is persuasive.
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Application 12/954,227
We determine that the Examiner fails to adequately explain why one
of ordinary skill in the art armed with the knowledge of DeLeonardis' s
teachings would place a closure sensor on a movable object, particularly
Gerber's uncoupling and displacing device 24. Although we agree with the
Examiner's position that one of ordinary skill in the art would consider the
cost effectiveness of using less sensors to monitor numerous doors (Ans. 2),
we fail to understand from the Examiner's position why one of ordinary skill
in the art would consider placing a closure sensor on Gerber's uncoupling
and displacing device 24 without the benefit of the Appellants' disclosure.
We note that the Examiner - in a conclusory manner - determines that
one of ordinary skill in the art would have mounted the closure sensor "at a
suitable angle" where it will properly be activated (without damage) after the
return of device 21 onto pin 23. See Ans. 3; see also (Gerber, Figs. 3c, 3d).
However, even if one of ordinary skill in the art would have been able to
determine "a suitable angle" where the closure sensor could have been
mounted, it is unclear why a person of ordinary skill would have placed a
closure sensor on a movable member, and particularly on Gerber's
uncoupling and displacing device 24.
We note that the Examiner's rejection adds that:
it would have been obvious to one of ordinary skill in the art at
the time the invention was made to have the [closure] sensor [as
taught by DeLeonardis] as part of the uncoupling and displacing
mechanism [as taught by Gerber] since it has been held that
forming in one piece an article which has formerly been formed
in two pieces and put together involves only routine skill in the
art.
Final Act. 3--4 (emphasis added). However, as pointed out by the
Appellants, DeLeonardis' s closure sensor 23 and Gerber's uncoupling and
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Application 12/954,227
displacing device 24 are separate articles not disclosed as usable together.
See Appeal Br. 5. As such, the Examiner's reliance on an unidentified court
holding appears to be misapplied.
Thus, we do not sustain the Examiner's rejection of independent claim
1 and dependent claims 2-5, 7, 10, and 11 as unpatentable over Gerber and
De Leonardis.
Dependent claims 6, 8, and 9
The rejections of claims 6, 8, and 9, based on Gerber and DeLeonardis
in combination with Block or Lei, rely on the inadequate reasoning
associated with the rejection of independent claim 1. The additional
findings and reasoning associated with the rejections of claims 6, 8, and 9 do
not remedy the inadequate reasoning associated with the rejection of
independent claim 1.
Thus, we do not sustain the Examiner's rejections under 35 U.S.C.
§ 103(a) of claim 6 as unpatentable over Gerber, DeLeonardis, and Block;
and claims 8 and 9 as unpatentable over Gerber, DeLeonardis, and Lei.
Independent claim 12 and dependent claim 13
The Appellants "concede that the Examiner has a strong position in
rejection of claim 12." Appeal Br. 10. Additionally, we note that the
Appellants do not provide an argument for the Examiner's rejection of
independent claim 12 or dependent claim 13. See Appeal Br. 10.
Thus, we summarily affirm the Examiner's rejection of claims 12 and
13.
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Application 12/954,227
DECISION
We REVERSE the Examiner's rejection under 35 U.S.C. § 103(a) of:
claims 1-5, 7, 10, and 11 as unpatentable over Gerber and DeLeonardis;
claim 6 as unpatentable over Gerber, DeLeonardis, and Block; and claims 8
and 9 as unpatentable over Gerber, DeLeonardis, and Lei.
We SUMMARILY AFFIRM the Examiner's decision rejecting claims
12 and 13 as unpatentable over Gerber and DeLeonardis.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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