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 .
Status of Claims
Claims 1-16 filed on 05/25/2025 in response to the petition for revival filed on 10/24/2025 are pending. Claim 11 is amended.
Response to Arguments
Applicant’s arguments, filed 05/12/205, with respect to the 101 rejection have been considered but are not persuasive.
Applicant argues, on pages 13-14, that the system of claim 1 cannot be said to be merely directed to "commercial interactions" or "certain methods of organizing human activity." Furthermore, there is nothing about the system of claim 1 that is a fundamental business practice, so that assertion by the Examiner is also disputed. Applicant argues that the claims are directed to a system to manage the transport of a package to multiple location and therefore directed to patent eligible abstract idea.
Examiner respectfully disagrees. The claim limitations as drafted, recite a concept, that, under broadest reasonable interpretation, is a certain method of organizing human activity. The limitations are analogous to managing personal behavior or interactions between people (interactions between people), or a commercial or legal interaction (sales activity) such as transporting packages for client, determining service charges based on a service and the printing of shipping labels. The assertion of the claims being directed to a system to manage the transport of a package to multiple locations is still part of the judicial exception of certain methods of organizing human activity.
Applicant argues, on page 14-15, that the claims address a particular challenge involved in transport management, such as directing items to be returned to users (e.g., patrons) after first being directed and transported to one or more servicing locations. The claimed solution is rooted in computer technology in order to overcome the conventional difficulties associated with lost and found items. Applicant further argues that Claim 1 recites various limitations that provide technological improvements that are contrary to the Examiner's conclusion that the claims are abstract.
Examiner respectfully disagrees. The additional elements (client device, processor, database, electronic transmission of labels, computing device) are recited at a high-level of generality such that they amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Accordingly, the additional elements, when viewed individually and in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)) Therefore, the claims recite an abstract idea. Furthermore, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. (See MPEP 2106.05(a)). Here, the alleged improvement is to the travel experience (See specification par. 0004-0012) and not to a technology or technical field or the functioning of a computer.
Applicant argues, on pages 15-16, that the claims to not present a preemption concern and provide significantly more.
Examiner respectfully disagrees. While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052, 119 USPQ2d 1370, 1376 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379, 115 USPQ2d 1152, 1158 (Fed. Cir. 2015). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible. (See MPEP 2106.04). Furthermore, as discussed with respect to Step 2A Prong Two, the additional elements, amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B. The additional elements, when considered separately and in combination, do not add significantly more to the exception. They are generally linking the use of a judicial exception to a particular technological environment or field of use and cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims are ineligible.
Novel/Non-Obvious Subject Matter
Claims 1-16 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 set forth in this Office Action. The claims are allowable over the art. The closest prior art of record is indicated in the Nonfinal Office action mailed on 05/24/2023 as well as the Final rejection mailed on 10/05/2023.
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.
Claim 10 recites: Means for receiving a pick up request from a client device, Means for determining a service charge based on the departure location and the service request, means for requesting payment of the service charge, means for confirming payment of the service charge, means for electronically causing transmission a first shipping label, means for determining if there is another service request based at least on the pick-up request; and means for electronically causing transmission a second service shipping label to the first service location.
Structure is not recited in claim 10.
For a computer-implemented means-plus-function claim limitation invoking 35 U.S.C. 112(f) the Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011). "‘It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed.’" EON Corp., 785 F.3d at 621, quoting Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer." EON Corp., 785 F.3d at 623 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." Id. at 622. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b) (b). See Net Money IN, Inc. v. Verisign. Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008). See also In re Aoyama, 656 F.3d 1293, 1297, 99 USPQ2d 1936, 1939 (Fed. Cir. 2011) ("[W]hen the disclosed structure is a computer programmed to carry out an algorithm, ‘the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm.’") (quoting WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999)). )MPEP 2181(II) B. To claim a means for performing a specific computer-implemented function and then to disclose only a general purpose computer as the structure designed to perform that function amounts to pure functional claiming. Aristocrat, 521 F.3d 1328 at 1333, 86 USPQ2d at 1239. In this instance, the structure corresponding to a 35 U.S.C. 112(f) claim limitation for a computer-implemented function must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239; Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008); WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339, 1349, 51 USPQ2d 1385, 1391 (Fed. Cir. 1999). The corresponding structure is not simply a general purpose computer by itself but the special purpose computer as programmed to perform the disclosed algorithm. Aristocrat, 521 F.3d at 1333, 86 USPQ2d at 1239. Thus, the specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer. See Aristocrat, 521 F.3d at 1338, 86 USPQ2d at 1241. ("Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a ‘special purpose computer programmed to perform the disclosed algorithm.’" (quoting WMS Gaming, 184 F.3d at 1349, 51 USPQ2d at 1391.)) An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary, Microsoft Press, 5th edition, 2002. Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or "in any other manner that provides sufficient structure." Finisar, 523 F.3d at 1340, 86 USPQ2d at 1623; see also Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1366, 65 USPQ2d 1934, 1941 (Fed. Cir. 2003); In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir.1997); Typhoon Touch Inc. v. Dell Inc., 659 F.3d 1376, 1385, 100 USPQ2d 1690, 1697 (Fed. Cir. 2011); In re Aoyama, 656 F.3d at 1306, 99 USPQ2d at 1945.
Examiner interprets that the server and processor of [0013] – [0015] of the specification are the corresponding structure corresponding to: means for receiving a pick-up request from a client device, means for requesting payment of the service charge, means for confirming payment of the service charge, means for electronically transmitting a first shipping label, means for electronically transmitting a second service shipping label to the first service location because these functions are essentially sending and receiving data, a function coextensive with a general purpose computer.
Examiner notes that the specification discloses what data may be the basis of a service charge, and discloses that a service charge may be looked up in a central database. [0051] - [0052].
Examiner finds that disclosure of what the charge may be based on does not amount to "a finite sequence of steps for solving a logical or mathematical problem or performing a task" and is therefore insufficient disclosure. However, examiner finds that services charges may be obtained from service provider information stored in central database is a finite sequence of steps for performing the task of determining a service charge. Therefore, examiner interprets the corresponding structure to perform the task of determining a service charge to mean obtaining service charges from a central database storing service provider information.
There is insufficient structure disclosed in the specification for performing the claimed function of determining if there is another service request based at least on the pick-up request.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1, 5, 10 and 11 are directed to a system with multiple components, and therefore is a machine.
Independent Claims
Step 2A Prong One
The limitation of Claim 1 recites:
receive a pick-up request … to pick up at least one package, the pick-up request … including at least a departure location and at least one service request to service at least one item in the at least one package;
identify a selected service provider based on the at least one service request, the selected service provider having associated service provider data;
printing a first shipping label at the departure location for attachment of the first shipping label to the package at the departure location, the facilitation including … transmit the first service shipping label to the departure location, the first service shipping label (i) being used to direct the package to a first service location to service the at least one item, and (ii) based on the service provider data;
determine another service request based at least on the pick- up request; and
printing, …, a second shipping label for attachment of the second shipping label to the package at the first service location, the second shipping label being used to direct the package to a second service location to further service the at least one item;
determine that the at least one item has undergone a second service by a second service provider at the second service location; and
printing, …, a return shipping label at the second service location for attachment of the return shipping label to the package at the second service location, the return shipping label being used to direct the package to a return location, the return location being different than the departure location, the first service location and the second service location.
The limitations of Claim 5 recites:
receive a pick-up request from … to pick up at least one package, the pick-up request including at least a departure location and at least a first service request to service at least one item in the at least one package;
acquire, … , at least one client preference pertaining to the client … or a client associated …;
determine a service provider from a plurality of potential service providers based on the at least one service request and on the at least one client preference;
acquire, …, service provider data associated with the service provider that has been determined; and
determine a first destination address of a first destination location based on the service provider data;
…
determine a first charge amount based on the departure location, the first destination address, and the at least one service request;
transmit a first payment request … for payment of the first charge amount;
confirm receipt of a payment of the first charge amount;
… transmit a first shipping label to be printed … the departure location, the first shipping label including the first destination address of the first destination location; and
… transmit a first pick-up notification to a shipping company for pick-up of the at least one package at the departure location, the first pick-up notification including at least the first destination address; and
…
determine whether service of the at least one item by the service provider at the first destination location is completed;
determine an additional service being requested based on the pick-up request;
determine a second destination address of a second destination location where the additional service is to be performed; and
transmit a second shipping label to be printed … the first destination address, the second shipping label being used to direct the package to the second destination address for performance of at least a portion of the additional service.
The limitations of Claim 10 recites:
An item transport management system, comprising:
means for receiving a pick-up request from … to pick up at least one package, the pick-up request being … submitted and including at least a departure location and at least one service request to service at least one item in the at least one package;
means for determining a service charge based on the departure location and the service request;
means for requesting payment of the service charge;
means for confirming payment of the service charge;
means for … causing transmission of a first service shipping label to the departure location after the payment for the service charge has been confirmed, the first service shipping label being used to direct the package to a first service location to service the at least one item based on the at least one service request;
means for determining if there is another service request based at least on the pick-up request; and
means for … causing transmission of a second service shipping label to the first service location, the second service shipping label being used to direct the package to a second service location if it is determined that there is another service request.
The limitations of Claim 11 recites:
receive a pick-up request from … to pick up at least one package, the pick-up request including at least a departure location and at least a first service request to service at least one item in the at least one package and at least a second service request for an additional service to the at least one item in the at least one package;
acquire, …, first service provider data associated with a first service provider able to provide the service to the at least one item being requested by the first service request;
determine a first destination address of a first destination location based on the first service provider data;
facilitate, …, printing a first shipping label at the departure location for attachment of the first shipping label to the package at the departure location, the facilitation including … transmit the first shipping label to the departure location, the first shipping label including the first destination address of the first destination location;
… transmit a first pick-up notification to a shipping company for pick-up of the at least one package at the departure location, the first pick-up notification including at least the first destination address;
determine whether the service of the at least one item at the first destination location is completed;
determine the additional service requested based on the second service request;
acquire, …, second service provider data associated with a second service provider able to provide the additional service to the at least one item being requested by the second service request;
determine a second destination address of a second destination location based on the second service provider data; and
facilitate, …, printing a second shipping label at the first destination location for attachment of the second shipping label to the package at the first destination location, the facilitation including … transmit the second shipping label to the first destination address, the second shipping label being used to direct the package to the second destination address for performance of at least a portion of the additional service requested based on the second service request.
The claim limitations as drafted, recite a concept, that, under broadest reasonable interpretation, is a certain method of organizing human activity. The limitations are analogous to managing personal behavior or interactions between people (interactions between people), or a commercial or legal interaction (sales activity) such as transporting packages for client, determining service charges based on a service and the printing of shipping labels. The generic computer implementations (see below) do not change the character of the limitations. Accordingly, the claims recite an abstract idea.
Step 2A Prong Two
The judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements:
Claim 1:
An item transport management system, comprising:
at least one server having a processor configured to:
client device
(request) electronically submitted to the at least on server
Electronically transmit first service shipping label
via a computing device associated with the selected service provider at the first service location
via a computing device associated with the second service provider at the second service location
Claim 5:
An ad-hoc auxiliary item transport system, comprising: a
central server having a processor configured to:
a shipment server having a processor configured to:
first computing device
second computing device
client device
database
electronically transmit a shipping label
electronically transmit a first pick-up notification
Claim 10:
Client device
Electronically submitted (request)
electronically causing transmission of a first service shipping label
electronically causing transmission of a second service shipping label
Claim 11:
An item transport management system, comprising:
at least one server having a processor configured to:
client device
database
electronically transmit the first shipping label
electronically transmit a first pick-up notification
electronically transmit the second shipping label
via a computing device at the departure location
via a computing device at the first destination location
These additional elements are recited at a high-level of generality such that they amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Accordingly, the additional elements, when viewed individually and in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h))
Therefore, the claims recite an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements, amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B. The additional elements, when considered separately and in combination, do not add significantly more to the exception. They are generally linking the use of a judicial exception to a particular technological environment or field of use and cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims are ineligible.
Dependent Claims
Step 2A Prong One
Dependent claims 2-4, 16, 6-9 and 12-15 further narrow the same abstract ideas recited in Claims 1, 5, and 11 respectively. Therefore, claims 2-4, 6-9 and 12-16 are directed to an abstract idea for the reasons given above.
Step 2A Prong Two
The judicial exception is not integrated into a practical application. In particular, the dependent claims recite the following additional elements:
Claim 4
Database
Client device
Claim 7
Electronically transmit a second payment request
Claim 12
Database
Client device
Claim 13
Electronically transmit return shipping label
Claim 14
Electronically transmit return shipping label
These additional elements are recited at a high-level of generality such that they amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. Accordingly, the additional elements, when viewed individually and in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)) Therefore, the claims recite an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements, amount to no more than generally linking the use of a judicial exception to a particular technological environment or field of use. The same analysis applies here in 2B. The additional elements, when considered separately and in combination, do not add significantly more to the exception. They are generally linking the use of a judicial exception to a particular technological environment or field of use and cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claims are ineligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ISMAIL A MANEJWALA whose telephone number is (571)272-8904. The examiner can normally be reached M-F 8-5.
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/ISMAIL A MANEJWALA/Primary Examiner, Art Unit 3628