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'
`Attorney Docket No. 00599-02
`
`U.S. DEPARTMENT OF COMMERCE
`0
`;;;;;;::;,:
`=
`f-.1
`PATENT ANDTRADEMARKOFFICE
`ll..r-
`,0'\_,_,
`-,
`.--------------ffrl~ _o
`Certificate Under 37 CFR 1.10
`~C\J -,
`0
`Date ofDeposit: June 20, 2001
`~
`\0 -o
`I hereby certify that this correspondence is being 0\
`deposited with the United States Postal Service as U
`
`"Express Mail" service under 37 CFR 1.10 on the .,..,
`date indicated above addressed to Box Provisional
`Application, Assistant Commissioner for Patents,
`
`-=
`
`W:C1~
`
`arr
`.
`Express Mail No. EL 821147312 US
`
`PROVISIONAL APPLICATION FOR PATENT
`COVER SHEET
`
`Address to: Box Provisional Application
`Assistant Commissioner for Patents
`Washington, DC 20231
`(703) 308-4357
`
`This is a request for filing a Provisional Application for
`Patent under 37 CFR 1.53(c)
`
`Inventor(s) and Residence(s) (city and either state or foreign country):
`
`Last Name
`
`First Name
`
`Middle Initial
`
`City
`
`State or Country
`
`Felder
`Graves
`Gunderson
`
`Robin
`B. Sean
`James
`
`A.
`
`P.
`
`Charlottesville
`Charlottesville
`Charlottesville
`
`Virginia
`Virginia
`Virginia
`
`For: AUTOMATED STORAGE AND RETRIEVAL APPARATUS FOR FREEZERS AND RELATED
`METHOD THEREOF
`
`14
`
`Sheets of specification.
`Sheets of drawings.
`
`University of Virginia Patent Foundation claims small entity status as a
`nonprofit organization (37 CFR §1.9(e) and §1.27(d)). Therefore, please
`charge the Small Entity Fee of $75 to Deposit Account No. 50-0423.
`
`Please direct all communication relating to this application to:
`Robert J. Decker, Esq.
`Patent Counsel
`University ofVirginia Patent Foundation
`1224 West Main Street, Suite 1-110
`Charlottesville, VA 22903 U.S.A.
`
`Telephone: (804) 924-2640
`Fax:
`(804) 924-2493
`
`This invention was made by an agency of the United States Government or under a
`contract with an agency of the United States Government.
`
`YES o
`
`NO 181
`
`Grant No.
`
`Dated: June 20, 2001
`
`Respectfully submitted,
`
`By:Y6~~
`
`Robert J. Decker (Reg. No. 44,056)
`
`Hamilton Ex. 1010
`Page 1
`
`

`

`00599-02
`
`Express Mail No. EL 821147312 US
`
`Automated Storage And Retrieval Apparatus For Freezers
`And Related Method Thereof
`
`BACKGROUND
`
`The increasing need for high quality bio-repositories in hospitals, research institutions,
`
`and pharmaceutical clinical research laboratories provides a market for automated ultra-cold
`
`storage devices that will dramatically reduce operating costs and increase laboratory efficiency.
`
`The present invention robotic devices will improve sample quality, organize storage, provide
`
`rapid access to all specimens, and maintain electronic records of all specimens stored within the
`
`container. This present invention system, designed as a slide-in unit for existing ultra-cold
`
`freezers, will keep the majority of the hardware in the door and insulated from the freezer
`
`compartment, minimizing both the number oflow-temperature hardware components and the
`
`actual alteration to the freezer itsel£ Only one moving component is continuously exposed to the
`
`design temperature of about -80 C, reducing the cost of production. The robotic freezer can
`
`operate in a stand-alone mode or can be integrated into a completely automated laboratory. It is
`
`scalable to meet the needs of small laboratories as well as large institutions that will require
`
`long-term storage of large numbers of samples.
`
`BRIEF SUMMARY OF INVENTION
`
`An electro-mechanical apparatus and related method thereof that automatically performs
`
`the insertion and removal of standard sized sample storage units into the insulated compartment
`
`of a freezer. The apparatus includes a rotating storage carousel consisting of an annular
`
`arrangement of vertical racks, to which are mounted standard sized trays. The insertion/retrieval
`
`device consists of a vertical elevator arranged tangentially to the storage device. This elevator
`
`contains a pickup tray that can be aligned vertically with any storage location, and either retract a
`
`stored unit from the storage location, or insert a unit into an empty storage location. The
`
`elevator is encased in an insulated sleeve, which provides access to the freezer compartment,
`
`while protecting the electro~ mechanical pickup tray from constant exposure to the freezer
`
`temperatures. The elevator and sleeve can rotate about their vertical axis to align with an access
`
`port, which provides for the introduction and removal of units from the storage location. This
`
`rotation prevents direct connection of the freezer compartment with external air, a source of heat
`
`Page 1 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 2
`
`

`

`00599-02
`
`loss, humidity, and thennal shock of the units. This results in improved sample quality, lowered
`
`operating costs, and reduced maintenance of the freezer.
`
`Also included in the access port is a bar-code scanner for the confinnation of the unique
`
`identifier associated with each stored unit. The entire apparatus is controlled by a device that
`
`1) Maintains infonnation relating to the location and contents of each stored unit,
`
`2) Controls the rotation of the storage device,
`
`3) Controls the vertical position and rotation of the elevator, and
`
`4) Controls the bar-code reader.
`
`This controller also provides authentication of the user requests to insert or retrieve units
`
`into the freezer, supporting both controlled access to the contents, and audit trials of all access
`
`and the users.
`
`The present invention method and apparatus of storing DNA or other biological
`
`specimens in a freezer compartment, wherein the specimens are retrieved from the freezer
`
`compartment. The method comprises the steps of: extending an insertion/retraction device into a
`
`storage cylinder that is used for storing the specimens; engaging and removing the stored
`
`specimens; transporting the removed specimens to an access port; scanning the specimens in the
`
`access port to provide output data regarding the origin and particulars of the specimens; and
`
`storing the output data for use by a controller means.
`
`BRIEF SUMMARY OF THE DRAWINGS
`
`Figure 1: Perspective overview of the apparatus
`
`Figure 2: Plan view of internal components
`
`Figure 3: Details of Storage tray, and attachment to vertical rack
`
`Figure 4: Detail of the Vertical Rack
`
`Figure 5: Detail of Storage Unit
`
`Figure 6: Detail of Access Port, including barcode reader
`Figure 7: Detail of the Insertion I Retraction Device
`Figure 8: Shows an alternative embodiment depicting the fixed carousel with a slice removed to
`
`,;
`
`allow one to view the Rotary Access Mechanism inside the carousel.
`
`Page 2 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 3
`
`

`

`00599-02
`
`Figure 9: Shows an alternative embodiment, as shown in Figure 8, of the complete carousel with
`
`the picker inside. Note the presence of a single fixed access port (dark rectangular
`
`opening on the right hand side).
`
`DETAILED DESCRIPTION OF THE INVENTION
`
`Overview
`
`The apparatus and related method thereof relates to an electro-mechanical device and
`
`controller that provides controlled access to items stored in an upright freezer. It comprises five
`
`main sub-systems:
`
`1)
`
`2)
`
`3)
`
`4)
`
`5)
`
`Storage Device,
`
`Insulated Elevator,
`
`Pickup Tray and insertion/retraction Device,
`
`Access Port, and
`
`Controller.
`
`The entire apparatus is part of a freezer system, designed to operate at about -SOC or less,
`
`which automatically inserts and retrieves items from the freezer compartment.
`
`The general access method is to rotate the storage device until the correct vertical rack is
`
`aligned with the vertical elevator, then raise or lower the pickup tray to the correct height. The
`
`insertion/retraction device is extended into the storage device, and the stored item is engaged by
`
`the insertion/retraction device and retracted from the rack, and is transported to the access port.
`
`To reduce the exposure of the retrieval hardware to the freezer temperature, the elevator and
`
`pickup tray and insertion/retraction device are encased in an insulating shell and rotated into the
`
`retrieval position only after the storage device is correctly aligned and the pickup tray is at the
`
`correct height. This should reduce the exposure to less than about 1 0 seconds during any
`
`retrieval or insertion.
`
`Page 3 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 4
`
`

`

`00599-02
`
`Freezer Compartment
`
`Storage Cylinder
`
`Rotating, Insulated
`Elevator
`
`-.:...;.,..,:.~-----Insertion/Retraction
`Device
`
`Access Port
`
`Barcode Reader
`
`Figure 1: Perspective overview of the apparatus
`
`Benefits
`This apparatus can be designed as a slide-in unit with a door replacement, and can be
`designed to keep the majority of the hardware either partially or totally insulated from the freezer
`compartment. This minimizes both the amount oflow-temperature hardware needed and the
`amount of alteration to the freezer itself There is only one moving component that is
`continuously exposed to the design temperature of about -80C, and this is the rotation shaft and
`support bearings of the Rotating Storage Device.
`
`Page 4 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 5
`
`

`

`00599-02
`
`Plan View of Internal CoMponents
`
`Figure 2: Plan view of internal components
`
`Storage Device
`The storage system comprises three main sub-components: the storage cylinder with
`rotational drive, the vertical racks, and the individual storage trays.
`
`Storage Trays
`The storage trays provide a support surface and positional guides for the storage units.
`The support trays are attached to the vertical racks by an attachment assembly that prevents the
`tray from either rotating or sliding along the vertical rack.
`The attachment assembly comprises a threaded slider that travels in a slot of the vertical
`rack, and can be engaged by screws inserted through the channel slot. This allows shelves to be
`located at any position along the vertical rack, providing the ability to adapt the storage system
`to storage items of different heights. This adjustment can be completed with the system in place
`in the freezer.
`
`Figure 3: Details of Storage tray, and attachment to vertical rack
`
`Page 5 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 6
`
`

`

`00599-02
`
`The open center of the tray allows the introduction of the insertion/retraction device to
`engage the storage units to either slide a unit onto the storage tray, or retract one. The raised
`guides along the sides of the storage tray prevent the storage unit from becoming mis-aligned on
`the storage tray. These raised guides can be stamped out of the tray surface.
`
`Vertical Rack
`
`Storage Trays
`
`Vertical Support
`
`Figure 4: Detail of the Vertical Rack
`
`The vertical racks are built from extruded aluminum or other suitable material.
`
`Storage Carousel
`The storage device comprises three horizontal, circular plates connected by an annular
`ring of vertical Storage racks. Two of the circular plates form the lower and upper surfaces of the
`storage device, and the third acts as a bearing race to support the storage device while allowing
`free rotation about the vertical axis. The vertical racks are arranged around the circumference of
`the circular plates, and extend vertically from the lower plate to the upper plate. These are
`oriented such that the storage plates face outwards from the central vertical axis, allowing access
`to stored units.
`
`Page 6 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 7
`
`

`

`00599-02
`
`Carousel
`~j._;_;.::..--~----'Top Plate
`(Transparent for clanty')
`
`Vertical Rack
`
`Motor
`Drive shaft
`
`Freezer Base
`Plate
`
`Figure 5: Detail of Storage Unit
`
`For example, these racks may mount to the upper and lower plates at two points using
`right-angle braces. The lower connection is to an aluminum platform, which is driven by a
`motor, allowing the base to rotate about the vertical axis. A second stabilizing plate is used at the
`top of the Vertical Racks. The storage cylinder rests on a PTFE ball bearing system to provide
`reduced friction at low temperatures. Alternative suitable predetermined designs and materials
`may be implemented as well.
`
`The storage device drive motor can be mounted under the floor of the freezer
`compartment, and the refrigeration equipment will be arranged around the motor.
`
`Page 7 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 8
`
`

`

`00599-02
`
`Elevator
`
`The pickup is a vertical lead screw that carries
`a pickup tray along with the insertion/
`retraction arm. The entire elevator is mounted
`to allow about 120-degree rotation about the
`vertical. This allows the elevator to rotate to
`align with the storage device, retrieve a
`storage unit, and rotate to align with the
`access mechanism. The elevator is encased in
`a 1 0" (or other predetermined size) diameter
`insulated cylinder, with a vertical gap to allow
`the pickup tray to travel vertically. As a result,
`7: Detail of the Insertion/Retraction Device when the arm is rotated to align with the
`access mechanism, it is insulated from the freezer compartment. It is only exposed to the design
`temperature for a few seconds or less during insertion or retrieval. This allows the use of
`components not rated for continuous service at about -80C.
`A silicon seal is used to between the moving insulated cylinder and the outside wall of
`the freezer. This seal must accommodate the movement of the cylinder as it rotates to and from
`the plate hotel. If friction is a problem, we can install a pneumatic collapsible seal. Such a seal
`would be collapsed before the cylinder turns and then expanded after the cylinder stops.
`
`Insertion/Retraction Device
`The retractor arm is a narrow sheet metal piece, bent into the form of a shallow 'U'. The
`width ofthe 'U' allows the upright arms to enclose a storage unit. Hence, if this arm is extended
`into the central gap of a support tray, and raised, the arm will engage the storage unit and allow it
`to be retracted onto the pickup tray. The retraction is accomplished via a horizontally mounted
`lead screw, which runs under the central gap of the pickup tray. The required vertical motion is
`achieved by using the vertical lead screw to raise or lower the pickup tray by 1/8 inch or suitable
`predetermined dimension; alternatively, by a vertically mounted rotating pinion stock, driven by
`a servomotor mounted beneath the floor of freezer compartment , which continually mates with a
`rack mounted on the bottom of retracting arm. As the transport tray moves vertically, the rack
`slides along the pinion stock in an axial motion. Once the transport tray has reached the proper
`vertical position, the pinion stock may be rotated, causing the rack to move retracting arm 43
`horizontally.
`
`Access Port
`The access port integrates a barcode reader with a support tray. It is located at bench
`height, allowing external access by either human or robotic transporters. When a storage unit is
`placed into the access port, the unit barcode is scanned, and a database record is entered logging
`the unit ID and the storage location. The storage unit is retracted onto the elevator and stored.
`Storage unit retrieval is the reverse of this process.
`
`Page 8 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 9
`
`

`

`00599-02
`
`Rotating, Insulated
`Elevator
`
`Insertion/Retraction
`Device
`
`Barcode Reader
`
`Storage Unit
`
`Figure 6: Detail of Access Port, including barcode reader
`
`Illustrative Sequence of Operation
`
`The sequence of operation is as follows. The system begins in its rest state, with the elevator
`
`aligned with the access port, and the retractor arm extended.
`
`1. Storage Unit is inserted.
`
`2. Storage Unit's barcode is scanned, and storage location is assigned
`
`3. Storage Unit is retracted onto pickup tray.
`
`4. Carousel is rotated to align correct Vertical Rack to the insertion position
`
`5. Pickup arm is moved vertically to align with correct tray height.
`
`6. Pickup arm is rotated to align with Vertical Rack (begin low-temp exposure)
`
`7. Storage Unit is inserted onto Support tray.
`8. Pickup arm is lowered 118 " and retracted
`
`9. Pickup arm is rotated to align with access port. (End low-temp exposure)
`
`10. Pickup arm is moved vertically to align with access port, and retractor arm extended (rest
`
`position)
`
`In the case of retrieval the following occurs:
`
`1. Storage Unit ID is entered electronically or via keyboard
`
`2. Storage Unit ID is looked up in the database, and storage location is determined.
`
`Page 9 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 10
`
`

`

`00599-02
`
`3. If required, an access code is entered and confirmed to allow access to the sample
`
`4. Carousel is rotated to align correct V-Rack to the insertion position
`
`5. Retractor arm is retracted, and Pickup arm is moved vertically to align with correct tray
`
`height.
`
`6. Pickup arm is rotated to align with V-Rack (begin low-temp exposure)
`
`7. Retractor arm is extended below Support tray.
`
`8. Pickup arm is raised 1/8 inch and Retractor arm is retracted
`
`9. Pickup arm is rotated to align with access port. (End low-temp exposure)
`
`10. Pickup arm is moved vertically to align with access port.
`
`11. Retractor arm is extended. (Rest position)
`
`12. Storage Unit is scanned, and database is updated
`
`User Interface
`
`The user interface will be based on a stand-alone PC attached to the system or connected
`
`by wireless communication. The primary functions will be to insert and retrieve Storage Units.
`
`In addition, basic summary statistics will be kept, including free space in the freezer, numbers of
`
`Storage Units, etc. In future versions, a touch-screen interface and an embedded computer would
`
`replace this PC interface. Various embodiments of software, hardware, or firmware may be
`
`employed.
`
`Page 10 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 11
`
`

`

`00599-02
`
`REFERENCES
`
`The following references are hereby incorporated by reference in their entirety herein.
`
`Pat Number Date
`July 1987
`4,678,894
`4,783,740
`November 1988
`August 1989
`4,855,909
`October 1989
`4,870,829
`June 1991
`5,025,140
`
`Title
`Sample identification system
`Inventory management system
`Forensic sample tracking system and print station therefor
`Biological freezing apparatus
`Apparatus for receiving articles, storing them after
`processing and subsequently re-issuing them
`Storage apparatus, particularly with automatic insertion
`and retrieval
`Method and apparatus for use in low-temperature storage
`Storage apparatus, particularly with automatic insertion
`and retrieval
`Simplified storage media library subsystem
`Method and apparatus for cryogenic storage of
`thermolabile products
`November 1998 Method and apparatus for inventorying laboratory
`specimens
`Method and apparatus for cryogenic storage of
`thermolabile products
`Rotating elevator mechanism for article transfer in an
`automated storage system
`December 1984 Device for Freezing Biological Products
`January 1989
`Apparatus for Cooling and Deep Freezing Samples of
`Biological Material Enclosed in Vessels
`Tissue Freezing Apparatus
`Storage Apparatus Particularly With Automatic Insertion
`and Retrieval
`Automated laboratory specimen organizer and storage unit
`
`5,125,240
`
`5,176,202
`5,233,844
`
`5,546,315
`5,638,686
`
`5,842,179
`
`5,964,095
`
`5,964,562
`
`4,485,641
`4,799,358
`
`5,628,197
`5,921,102
`
`6,068,437
`
`June 1992
`
`January 1993
`August 1993
`
`August 1996
`June 1997
`
`October 1999
`
`October 1999
`
`May 1997
`July 1999
`
`May2000
`
`Page 11 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 12
`
`

`

`00599-02
`
`Non-Confidential Summary
`
`Increasing demands for long-term, high quality storage of DNA and other biologic
`
`specimens can be met by automated devices designed and engineered to function at ultra-cold (-
`
`40C- -160C) temperatures. In particular, the present invention cold storage devices equipped
`
`with automation can be cost justified due to the fact that automation can provide, among other
`
`things a more organized storage and retrieval system, provide less accumulation of moisture and
`
`frost within the cold storage compartment, less temperature fluctuations from sample
`
`withdrawal, and rapid random access to all specimens. An added benefit will be the ability to
`
`maintain an up to date record of all specimens stored within the container. We have designed an
`
`automated freezer to store standardized specimen containers, maintain inventory records, and
`
`provide fast, controlled, and automated access to all samples without causing sample degradation
`
`to other samples in the system.
`
`Illustrative Advantages of the Present Invention, But Not Limited Thereto
`• More efficient
`• Higher sample quality
`• Faster retrieval times
`• Lower maintenance costs
`• Lower operating costs
`• Higher security for samples
`• Audit trail for legal requirements
`• Less wastage of time sensitive samples
`
`Example Embodiments
`
`An additional method and apparatus of implementing the present invention freezer
`
`storage system is discussed below. In this embodiment example, the storage carousel is fixed in
`
`place (i.e. no rotation). In this configuration, we refer to it as a fixed hotel. The storage
`
`containers are accommodated on shelves in the same manner as in the storage carousel.
`
`However, the picker mechanism is located in the central core of the fixed hotel. The picker
`
`mechanism may rotate about its axis and travel vertically. The picker mechanism retrieves
`
`storage containers from shelves, takes them to a vertical position aligned with an access portal,
`
`and moves them through the portal to the exterior of the freezer. It is noted that the access portal
`
`Page 12 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 13
`
`

`

`00599-02
`
`is a fixed hole in the carousel allowing samples to access the picker mechanism. One or more
`
`access portals may be used if one wishes to mate several carousels together, or provide more
`
`than one point of access. Furthermore, the access portal may be movable if one wishes to
`
`provide rotational movement to one "slice" of the carousel.
`
`An advantage of this approach, but not limited thereto is that it may be accommodated in
`
`a cylindrical freezer compartment, occupying less space. In addition, this apparatus and method
`
`obviates the need for a rotational mechanism for the carousel (unless one wishes to have a
`
`movable access port). All other aspects ofthe design are the same as previously described
`
`above.
`
`Figure 8. This model depicts the fixed carousel with a slice removed to allow one to view the Rotary Access
`Mechanism inside the carousel. The rotary access mechanism may be insulated to provide temperature control for
`the core (to lessen the need for ultracold compatible mechanics, or to allow temperature modification of the
`specimens for biological reasons). One could also have a second carousel outside the one depicted as to allow for
`greater storage space. In this case the inside carousel could rotate as to allow a vertical arrangement of access ports
`to access any compartment in the outer carousel.
`
`Page 13 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 14
`
`

`

`00599-02
`
`Figure 9. This is a view of the complete carousel with the picker inside. Note the presence of a single fixed access
`port (dark rectangular opening on the right hand side).
`
`Page 14 of 14 (Specification)
`
`Hamilton Ex. 1010
`Page 15
`
`

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