DETAILED ACTION
This Non-Final Office action is in response to Applicant’s RCE filing on 06/27/2025. Claims 1, 3, and 11 are pending. The effective filing date of the claimed invention is 06/30/2023.
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 .
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the drawings do not include the claimed “recognition system”. See Applicant’s Spec at [0055], “A recognition system (not shown in the drawing) in the merchandise shipping management system according to the embodiment of the present invention can be used for determining the size and shape of each package. Also, a known automatic packing system (not shown in the drawing) can be used for the packing process.“ (emphasis added). Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
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, 3, and 11 are rejected under 35 U.S.C. 101 because the claims are directed to abstract idea without significantly more.
Step 1 – Claims 1, 3 are process claims. Claim 11 is apparatus claim. Accordingly, step 1 is satisfied.
Step 2A, Prong 1 – Exemplary claim 1 (and 11) recites the abstract idea of a method for packing a customer's package, in a distribution system comprising a management server and involving transfer of the customer's package from a transfer-from distribution center to a transfer-to distribution center and delivery of the customer's package from the transfer-to distribution center to a destination or from the transfer-to distribution center to the destination via a nearest base from the destination, the method comprising:
managing for associating, by the management server (server addressed in Step 2A, Prong 2; Step 2B), information of the plurality of the customer's packages with information of the destinations of the customers’ packages, for each of the customers at the transfer-from distribution center, for each customer related to the destination (the step of managing data, managing associations of data, falls under, e.g., MPEP 2106.04(a)(2)(II)(A-C), with (C) citing Intellectual Ventures I v. Capital One);
managing for automatic packing, by the management server (server addressed in Step 2A, Prong 2; Step 2B), the plurality of the customers’ packages based on sizes and/or shapes of the one or more packages at the transfer-from distribution center, wherein the plurality of customer's packages addressed to the destination, during the transfer from the transfer-from distribution center to the transfer-to distribution center or from the transfer-from distribution center to the nearest base, are managed to be packed in different packing materials according to at (the step relates to “managing the automatic packing” see MPEP 2106.04(a)(2)(II) certain methods of organizing human activities including (B) commercial or legal interactions of packing packages in a box, where the data of the packing is managed); and
managing for automatic repacking, by the management server (server addressed in Step 2A, Prong 2; Step 2B), the plurality of the packages packed in the different packing materials according to the shapes or the sizes in a same packing material addressed to each of the destinations at the transfer-to distribution center or at the nearest base (see MPEP 2106.04(a)(2)(II) certain methods of organizing human activities including (B) commercial or legal interactions of packing packages in a box, where the data of the packing is managed).
Accordingly, when these limitations are viewed alone and in ordered combination, as a whole, claim 1 (and 11) is found to recite abstract idea.
Step 2A, Prong 2 – Claim 1 (and 11) does not integrate the identified abstract idea into practical application. The additional elements recited in exemplary claim 1 are a management server that implements the abstract idea and managing an automated process. These elements are recited at a high level of generality and act as tools to implement the abstract idea. For the management server, see MPEP 2106.05(f) and the “apply it” rationale. For the automation, see MPEP 2106.05(a)(I) Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential). For claim 11, instead of reciting the server, Applicant recites “one or more memories storing instructions; and one or more processors, in which, when the processors operating in multiples, the processors process tasks in a distributed or parallel manner, executing the instructions” to implement the abstract idea. The examiner refers to Applicant’s Specification for the written description relating to this additional element. Applicant’s Specification at e.g. [0037-38] does support such a limitation, but the Specification only refers to these additional elements as using what available such as distributed or parallel processing “to increase its hardware performance as necessary, although this is not necessarily the case in the present invention.” The limited written description leads the examiner to conclude that Applicant did not come up with an improvement the distributed/parallel processing technology, but is simply using that technology in this area. See MPEP 2106.05(h) Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. See also the additional limitation of “a recognition system” that appears to recognize a package. See Applicant’s Spec at [0055] where the recognition system is not shown in the drawing and simply determines the package size and shape. There is no description that there is an improvement to the recognition system; quite the opposite. The lack of description shows that this is a known recognition system that is being used as a tool to recognize the package, something that it was made to do. The examiner does not find this to be an improvement to the underlying recognition technology.
When viewed alone and in ordered combination, as a whole, these additional elements do not integrate the abstract idea with practical application. Claim 1 (and 11) is found to be directed to abstract idea.
Step 2B - Claim 1 does not recite significantly more than the abstract idea. The analysis from Step 2A, Prong 2 is applied to Step 2B. MPEP 2106.05(d) - Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”);
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
While not recited explicitly the same as in these cases, claim 1 (and 11) appears to recite language similar to performing repetitive calculations (in the managing of the data and sizes/shapes, there are several “calculations” that are needed to be made regarding the data). The managing of data, as claimed in each limitation of claim 1, is indeed electronic recordkeeping, on some level, and the electronic recordkeeping part of the claim is well-understood, routine, and conventional, as stated in the MPEP referring to Alice and Ultramercial. Claim 1 and 11 further recite language similar to electronic recordkeeping and storing and retrieving information from memory, as found throughout the claim.
When viewed alone and in ordered combination (as a whole), these additional elements do not recite significantly more than the abstract idea. Claim 1 is found to be directed to abstract idea.
Dependent Claim – Claim 3 recites more abstract idea of delivering two packages at once. See MPEP 2106.04(a)(2)(II)(B) commercial legal interaction.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3, 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. No. 2019/0318307 to Higashida et al. (“Higashida”) in view of U.S. Pat. No. 9,818,235 to Rotman et al. (“Rotman”).
With regard to claim 1, Higashida discloses the claimed method for
managing for1 (see [0001] The present invention relates to a transportation and shipping management system that manages the transportation and shipping of an item; [0069] “The servers are information processing apparatuses (computers) including an arithmetic processor (arithmetic processing unit), a storage device, an input device, an output device, and a communication device, and a function thereof is realized by executing a program stored in the storage device by the arithmetic processor. The servers may be realized by one computer or may be realized by a plurality of computers in cooperation with each other.” The examiner notes, as this portions points out, that servers manage data, as claimed) associating by the management server (for management server is e.g. Fig. 10, 200 for 200 TRANSPORTATION AND SHIPPING MANAGEMENT SERVER) the customer’s packages (see e.g. [0082]), in a distribution system comprising a management server (see e.g. [0039] management server) and involving transfer of the customer's packages from a transfer-from distribution center to a transfer-to distribution center (see e.g. Fig. 1B, where product is delivered from various shipping centers, various distribution bases, etc., all determined by server) and managing delivery of the customer's package from the transfer-to distribution center to a destination or from the transfer-to distribution center to the destination via a nearest base from the destination (see e.g. Fig. 1B, where the product is delivered to at least of the nearest base(s) 4), associating by the management server the customer’s package with information on the destination at the transfer-from dc to the transfer-to dc or from the transfer-from dc to the nearest base (see e.g. [0030] where at one of the relay bases a tag is placed on package indicating information about destination; [0079] delivery destination address; [0082]), and
managing for automatic packing by the management server the plurality of the customers packages (see e.g. Fig. 11; see e.g. Fig. 1B,
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managing for automatic repacking by the management server the plurality of customer’s packages addressed to the destination in a same packing material at the transfer to dc or nearest base (see e.g. [0082] Fig. 12),
Higashida does not disclose: managing to be packed in different packing materials according to the shapes or sizes recognized by the recognition system, regardless of destination; are packaged in different packing materials according to the shape or size; a recognition system that recognizes shape/size of item. For claim 11, Higashida does not appear to explicitly disclose parallel/distributed processing. However, Rotman teaches these limitations at e.g. Fig. 2 and col. 5, ln. 20-40 showing the recognition system image capture devices that captures images of items inside the shipment container; Fig. 3 col. 7 ln. 40-67 show sizes and shapes known and taken into account; and repacking the shipment container based on the sizes and shapes of the items inside the shipment box, shown at e.g. col. 10, ln. 40-60, Fig. 4, 400[Wingdings font/0xE0]408[Wingdings font/0xE0] STOP PACKAGE AND REPACK 418[Wingdings font/0xE0]REROUTE PACKAGE FOR REPACKING 420. For claim 11, see parallel processing at Rotman at col. 16, ln. 40-60.
Therefore, it would have been obvious to one of ordinary skill in the shipment packaging art before the effective filing date of the claimed invention to modify Higashida’s transportation and shipping management system to include the ability to recognize the items size shape in the shipping box, make a determination to repackage the shipment box based on the known size shape dimensions, as shown in Rotman, where this is beneficial in that the recognition system of Rotman identifies situations where the items need to be repacked, such as if the items are likely to be damaged, where this leads to fewer damages to the items in the package, and less returns, warranty issues, etc. for the seller, and more customer satisfaction for receiving an item that is not damages.
With regard to claim 3, Higashida further discloses where at least one of the packing materials includes the customer's package together with a package temporarily undertaken from another company (see e.g. Fig. 1B, nearest base 4 has packages coming in from shipping center/distribution base, and from warehouse 3).
Response to Arguments
The examiner has fully considered Applicant’s arguments on 06/27/2025 and does not find them persuasive.
Applicant argues that the following in their Specification represents integration of practical application:
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The examiner respectfully disagrees. To be clear, “to reduce package rooms and package spaces during transportation for distribution. Further this leads to a suppression of an increase in cost or reduction in cost.” Better management of data so that a room can be smaller, or one can fit more boxes in a room, leading to cost savings, is a business problem and business solution. The examiner respectfully disagrees that this represents practical application, as indicated in the rejection above.
Applicant argues that the cited references do not teach the amended limitations. The examiner has converted the rejection from a 102 to a 103, and therefore all of the arguments are moot in view of the new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Peter Ludwig whose telephone number is (571)270-5599. The examiner can normally be reached Mon-Fri 9-5.
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/PETER LUDWIG/Primary Examiner, Art Unit 3687
1 The examiner notes that “managing for” as recited in the claims does not appear to invoke 35 USC 112(f), and therefore the examiner has not interpreted as such.