DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 19, 2026 has been entered.
Status of the Claims
1. This action is in reply to the Request for Continued Examination dated March 19, 2026.
2. Claims 1 and 3-20 are currently pending and have been examined.
3. Claims 1, 3-8, 10-11, 17 and 19 have been amended.
4. Claim 2 has been cancelled.
Notice of Pre-AIA or AIA Status
5. 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
6. 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 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-3, 5-16 and 18-20 of U.S. Patent No. 11,842,586. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims describe a substantially similar process for receiving a request to access the secure container using an authentication factor ultimately responding in an unlocked signal being sent to unlock the secure container and provide access to the secure container.
Claims 1 and 3-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-2, 4-5, 7-11, 13-14 and 16-20 of U.S. Patent No. 11,195,355. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims describe a substantially similar process for receiving a request to access the secure container using an authentication factor ultimately responding in an unlocked signal being sent to unlock the secure container and provide access to the secure container.
Claim Interpretation – Broadest Reasonable Interpretation
7. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e. the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized language is interpreted as not further limiting the scope of the claimed invention.
As in Claim 1:
communicate, via the network interface and to a container administrator computing system, the first authentication factor for authenticating the user;
receive, via the network interface and from the container administrator computer system, a second authentication factor for displaying via the human-machine interface, to the user;
receive, via an interaction with the human-machine interface and in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator computer system, wherein the indication is based on a comparison between (i) a computer-readable code generated by an application hosted on the mobile computing device and communicated to the container administrator computing system and (ii) the second authentication factor displayed via the human-machine interface”
receive, via the network interface and from the container administrator computing system, an unlock signal, wherein the locking device is configured to use the unlock signal to unlock the physical compartment of the secure container to provide the user physical access to the secure container.
As in Claim 10:
communicating, via a network interface and to a container administrator computing system, the first authentication factor for authenticating the user;
receiving, by the secure container via the network interface from the container administrator computer system, a second authentication factor for displaying via the human-machine interface, to user;
receiving, via an interaction with the human-machine interface and in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator computing system, wherein the indication is based on a comparison between (i) a computer-readable code generated by an application hosted on the mobile computing device and communicated to the administrator computing system and (ii) the second authentication factor displayed via the human-machine interface;”
unlocking, using the unlock signal and by a locking device of the secure container, a physical compartment of the secure container to provide the user physical access to the secure container
As in Claim 19:
communicate, via the network interface and to a container administrator computing system, the first authentication factor for authenticating the user;
receive, via the network interface and from the secure container administrator computer system, a second authentication factor for displaying, via the human-machine interface, to the user;
receive, via an interaction with the human-machine interface and in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator computer system, wherein the indication is based on a comparison between (i) a computer-readable code generated by an application hosted on the mobile computing device and communicated to the container administrator computing system and (ii) the second authentication factor displayed via the human-machine interface”
receive, via the network interface and from the container administrator computing system, an unlock signal, wherein a respective locking device is configured to use the unlock signal to unlock the physical compartment of the secure container to provide the user physical access to the secure container.
As in Claim 4:
wherein the one or more sensors comprise a camera that captures images of the physical compartment, and wherein the camera is configured to provide the images to the container administrator computer system.
As in Claim 5:
wherein the one or more sensors comprise a weight sensor that generates data corresponding to a weight of an object positioned in the physical compartment, and wherein the weight sensor is configured to provide the data to the container administrator computer system.
As in Claims 6 and 15:
wherein the second authentication factor comprise at least one of an alphanumeric code or a computer-readable code scannable by a device of the user.
As in Claim 8:
wherein the human-machine interface is configured to provide the data packet to the container administrator computer system for authenticating the user based on the data packet.
As in Claims 9 and 18:
wherein the locking device is configured to receive the unlock signal, responsive to the user verifying that the secure container is associated with the container administrator computer system and the container administrator computer system authenticating the user.
`As in Claim 13:
wherein the one or more sensors comprise a camera, and wherein the condition comprises an image of an interior of the physical compartment of the secure container.
As in Claim 14:
wherein the one or more sensors comprise a weight sensor, and wherein the condition comprises data corresponding to a weight of an object within the physical compartment of the secure container.
As in Claim 16:
further comprising scanning, by a card reader of the secure container system, a card of the user to capture data used for authenticating the user.
As in Claim 17:
transmitting, via the network interface to the container administrator computer system, the data packet, for authenticating the user based on the data packet.
As in Claim 20:
wherein the respective locking device is configured to receive the unlock signal, responsive to the user verifying that the secure container is associated with the container administrator computer system and the container administrator computer system authenticating the user.
Further, Applicant uses the following terminology in their claim set:
Human-machine interface:
“The human-machine interface 126 includes devices and/or components configured to enable the user to receive, input, and/or exchange information with the administrator system 102 when the user is located at the secure container 104. Such information may be used for authenticating the user at the secure container 104. Additionally, such information may be used for authenticating the administrator system 102. In one example embodiment, the human-machine interface 126 is a touchscreen display configured to convey information to and receive information from the user. In another example embodiment the human-machine interface 126 is a personal assistant configured to interact with and talk to the user. In another example embodiment, the human-machine interface 126 is a device configured to receive, process, and transmit information from a possession authentication device provided by the user (such as a card reader). In other embodiments, the human-machine interface 126 is a communications device (such as an NFC device) configured to deliver information to and/or receive information from the mobile computing device 106. It should be understood that the example embodiments describing the human-machine interface is not meant to limit the current application. The human machine interface 126 may be any device used to enable the exchange of information between the user and any system or component in the systems described herein.”
Accordingly, for purposes of examination, Examiner will interpret the term human machine interface as it may be any device used to enable the exchange of information between the user and any system or component in the systems described or may include a personal assistant configured to interact with and talk to the user.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. Claims 1 and 3-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The amendment filed March 19, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
As in Claim 1 (and substantially similarly in Claims 10 and 19)
“receive, via a short-range wireless communication between the human-machine interface and a mobile computing device associated with a user, a first authentication factor comprising a data packet uniquely assigned to a user”
Applicant’s specification does not recite a short-range wireless communication per se. Rather, the specification, at paragraphs 28 and 37 as filed, discloses the use of NFC – which is a specific type of short-range wireless communication. The term short-range wireless communication could encompass a number of other technologies (i.e., Bluetooth, RFID, IR, etc.) and thus is broader than the specification discloses. Dependent Claims 3-9, 11-18 and 20 are further rejected as based on a rejected base claim.
As previously raised, each of Claims 11-14 make reference to a “condition” within the physical compartment of the secure container. There is no mention of a “condition”, “data corresponding to the condition”, “the condition comprises an image of an interior of the physical compartment” or “wherein the condition comprises data corresponding to a weight of an object within the physical compartment” in the specification at all. The recitation of a condition is broader than the specification discloses.
Applicant is requested to bring the claims within the disclosed boundaries of the specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
9. Claims 1 and 3-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 1 recites a system. Claim 10 recites a method. Claim 19 recites a system.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 1 recites the abstract idea of selectively locking and unlocking a secure container. The idea is described by the following limitations:
to selectively lock and unlock a physical compartment of a secure container;
wherein the secure container is configured to:
to receive a first authentication factor comprising a data packet uniquely assigned to the user;
to communicate to a container administrator the first authentication factor
to receive from a container administrator, a second authentication factor for displaying, to the user;
to receive in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator, wherein the indication is based on a comparison a code communicated to the container administrator and the second authentication factor displayed;
communicate to the container administrator the indication verifying the secure container is associated with the container administrator; and
to receive from the container administrator an unlock signal to unlock the physical compartment of the secure container to provide the user physical access to the secure container.
Claim 10 recites the abstract idea of unlocking a physical compartment of a secure container. This idea is described by the following limitations:
receiving, via a secure container, a first authentication factor comprising a data packet uniquely assigned to the user;
communicating, to a container administrator, the first authentication factor for authenticating a user;
receiving by the secure container, from the container administrator, a second authentication factor for displaying to the user;
displaying, the second authentication factor;
receiving, via an interaction and in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator wherein the indication is based on a comparison between a code communicated to the container administrator and the second authentication factor displayed;
communicating to the container administrator, the indication verifying the secure container is associated with the container administrator;
receiving by the secure container and from the container administrator an unlock signal; and
unlocking, using the unlock signal a physical compartment of the secure container to provide the user physical access to the secure container.
Claim 19 recites the abstract idea of selectively locking and unlocking a secure container. The idea is described by the following limitations:
a plurality of secure containers, each secure container configured to selectively lock and unlock a physical compartment of a secure container;
wherein each of the secure containers are configured to:
receive a first authentication factor comprising a data packet uniquely assigned to the user;
communicate to a container administrator, the first authentication factor for authenticating the user;
receive from a container administrator, a second authentication factor for displaying to the user;
receive via an interaction and in response to the second authentication factor, an indication verifying that the secure container is associated with the container administrator, wherein the indication is based on a comparison between a code communicated to the container administrator and the second authentication factor displayed;
communicate to the container administrator, the indication verifying the secure container is associated with the container administrator; and
receive from the container administrator an unlock signal to unlock a physical compartment of the secure container to provide the user physical access to the secure container.
As a result, the abstract ideas describe certain methods of organizing human activity. Under a BRI, the claims may reflect no more than a user interacting with a human-machine interface on a secure container to enter a PIN or provide some other authentication factor that is sent via a network, to a computing system of a container administrator for authenticating a user; receiving a second authentication from the container administrator that is displayed on the human-machine interface on the secure container; receiving from the human-machine interface on the secure container an indication verifying an association with the container administrator based on a comparison of a code sent to the user and displayed on the human-machine interface; and communicating the indication back to the container administrator; and then receiving an unlock signal by the secure container to unlock the physical compartment of the secure container to provide the user physical access to the secure container. This all may be back and forth communication between the secure container human-machine interface actuated by a user and the container administrator computing system.
As to certain methods of organizing human activity, the steps involve managing personal behavior or relationships or interactions between people (including following rules or instructions) as seen above. In some implementations, the claims could also reflect commercial interactions; marketing or sales activities or behaviors; and/or business relations. (Step 2A, Prong 1: Yes, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In particular, Claim 1 recites a locking device, a network interface, a human-machine interface, a mobile computing device associated with a user, a computer-readable code generated by an application hosted on the mobile computing device; and a container administrator computer system. Claim 10 recites a mobile computing device associated with a user, a computer-readable code generated by an application hosted on the mobile computing device, a network interface, a container administrator computer system, and a human-machine interface. Claim 19 recites a respective locking device, a network interface, a human-machine interface, a mobile computing device associated with a user, a computer-readable code generated by an application hosted on the mobile computing device; and a container administrator computer system.
The claims only recite a locking device, a network interface, a human-machine interface, a secure container system, a mobile computing device associated with a user, a computer-readable code generated by an application hosted on the mobile computing device, and the container administrator computer system which are recited at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, claims 1, 10 and 19 are directed to an abstract idea without a practical application. (Step 2A – Prong 2: No the additional claimed elements are not integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
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: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); 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., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (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; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are receiving or transmitting data over a network (Symantec, TLI, OIP Techs – MPEP 2106.05(d)(II); storing and retrieving information in memory (Versata, OIP Techs – MPEP 2106.05(d)(II) and electronically scanning or extracting data (Content Extraction – MPEP 2106.05(d)(II) used to – all of which have been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
Applicant’s specification discloses the following:
“Referring now to Fig. 1, a block diagram of a secure container management system 100 is shown, according to an example embodiment. The secure container management system 100 is shown to include in administrator system 102 (also referred to herein as a container administrator computer system 102) and secure container(s) 104. The secure container management system 100 may be communicably coupled to various mobile computing device(s) 106 (e.g., associated with corresponding users) and account management system 108. The secure container management system 100 may be communicably coupled to the mobile computing device(s) 106 and the account management system 108 via a network 110. The various components of the system are operably and communicatively coupled through a network 110, which may include one or more of the Internet, cellular network, Wi-Fi, Wi-Max, a proprietary banking network, or any other type of wired or wireless network or combination of wired and wireless networks. In some embodiments, the secure containers 104 may be managed by the same entity which manages an account for a user. In such embodiments, the account management system 108 may be a component of or included within the secure container management system 100.” (See Applicant Specification paragraph 16)
“In some embodiments, the administrator system 102 is configured to interface with other systems and components, such as the account management system 108, the secure container(s) 104, and the mobile computing device 106. In some embodiments, the administrator system 102 is configured to interface with the secure container(s) 104 across one network 110 (for instance, a Local Area is one ((LAN), Wide Area Network (WAN), etc.) In other words, various networks 110 may be used for connecting the systems and components described herein.” (See Applicant Specification paragraph 17)
“Each of the components/systems may include a network interface 116. The network interface 116 includes, for example, hardware and associated program logic that facilitates connection to the network 110 and provides for communication between the administrator system 102, the secure containers 104, mobile computing device 106, and/or account management system 108. Thus, each of the components may be communicably coupled to one another to facilitate operative communication between the mobile computing device 102, the secure container system 104, the secure container administrator system 106, and the account management system 108.” (See Applicant Specification paragraph 18)
“The mobile computing device 106 is configured to execute, provision, or otherwise render a mobile application 112. The mobile application 112 may be a local application stored and executing on the mobile computing device 106, a cloud-based application which is delivered to the mobile computing device 106, a website or webpage, etc. The mobile application 112 is associated with the secure containers 104. The user may access the mobile application 112 and provide log-in credentials for requesting access to a secure container 104. The mobile application 112 may be used (e.g., through the mobile computing device 106) to request access to one of the secure containers 104. A user may generate the request by providing various information to a user interface for the mobile application 112. The mobile computing device 106 may be configured to communicate various requests (including such information) to the administrator system 102 for accessing one or more of the secure container(s) 104. The mobile computing device 106 is configured to use the network interface 116 to deliver the request (via the network 110) to the administrator system 102.” (See Applicant Specification paragraph 20)
“The mobile computing device 106 may include various sensors 114 and an input/output (I/O) device 118. The sensors 114 may include an image sensor (e.g. a camera) for detecting visible light, a biometric sensor, etc. Such sensors 114 may be configured to receive and/or detect information which may be used to authenticate the user/administrator system 102. The I/O device 118 is configured to facilitate interaction between the user and the mobile computing device 106. In one example embodiment, the I/O device 118 is a touchscreen coupled to a cellular phone, which is configured as the mobile computing device 106. While described as a mobile computing device 106, in some instances, the mobile computing device 106 may be, for instance, a desktop, tablet, or other form of computing device.” (See Applicant Specification paragraph 21)
“The locking device 122 may be an electronic or electrically controlled lock. In some embodiments, the locking device 122 may be a magnetic lock, an electronic lock, etc. The locking device 122 may be configured to lock a container door 204 for the respective locker 200. The locking device 122 may be located on and coupled to the container door 204. In some embodiments, the locking device 122 may selectively engage one or more walls 206 of the secure container 104 to prevent opening of the container door 204 (and thus accessing the storage space 208 for the secure container 104). For instance, the locking device 122 may engage one or more walls 206 of the secure container 104 at a joint 210 between the wall 206 and the container door 204. In this regard, the joint 210 between the wall 206 and container door 204 may be “loaded” by the locking device 122 such that the joint 210 may freely pivot when the locking device 122 is in an unlocked state. In some instances, the locking device 122 may be located on the container door 204 and include a locking mechanism (such as a deadbolt, for instance) that extends into a receiver 212 located on or near an interior wall 206. In each of these embodiments, the locking device 122 may be configured to selectively lock and unlock the container door 204 and thus prevent (or permit) access to the internal storage space 208 for the secure container 104.” (See Applicant Specification paragraph 26)
“The human-machine interface 126 includes devices and/or components configured to enable the user to receive, input, and/or exchange information with the administrator system 102 when the user is located at the secure container 104. Such information may be used for authenticating the user at the secure container 104. Additionally, such information may be used for authenticating the administrator system 102. In one example embodiment, the human-machine interface 126 is a touch screen display configured to convey information to and receive information from the user. In another example embodiment, the human-machine interface 126 is a personal assistant configured to interact with and talk to the user. In another embodiment, the human-machine interface 126 is a device configured to receive, process, and transmit information from a possession authentication device provided by the user (such as a card reader). In other embodiments, the human-machine interface 126 is a communications device (such as an NFC device) configured to deliver information to and/or receive information from the mobile computing device 106. It should be understood that the example embodiments describing the human-machine interface is not meant to limit the current application. The human-machine interface 126 may be any device used to enable the exchange of information between the user and any system or component and systems described herein.” (See Applicant Specification paragraph 28)
“An exemplary system for implementing the overall system or portions of the embodiments might include a general-purpose computing computers in the form of computers, including a processing unit, a system memory, and a system bus that couples various system components including the system memory to the processing unit. Each memory device may include non-transient volatile storage media, non-volatile storage media, non-transitory storage media (e.g. one or more volatile and/or non-volatile memories), a distributed ledger (e.g. a blockchain), etc. In one example embodiment, the non-volatile media may take the form of ROM, flash memory (e.g. flash memory such as NAND, 3D NAND, NOR, 3D NOR, etc.) EEPROM, MRAM, magnetic storage, hard discs, optical discs, etc. In other embodiments, the volatile storage media may take the form of RAM, TRAM, ZRAM, etc.) Combinations of the above are also included within the scope of machine-readable media. In this regard, machine-executable instructions comprise, for example, instructions and data which cause a general-purpose computer, special purpose computer, or special purpose processing machines to perform a certain function or group of functions. Each respective memory device may be operable to maintain or otherwise store information relating to the operations performed by one or more associated circuits, including processor instructions and related data (e.g. database components, object code components, script components, etc.), in accordance with the example embodiments described herein.” (See Applicant Specification paragraph 76)
Generic computer components recited as performing generic computer functions that are well understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered 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 independent claims 1, 10 and 19 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
The dependent claims 3-9, 11-18 and 20 further define the abstract idea presented in the respective Independent Claims 1, 10 and 19 and are further grouped as certain methods of organizing human activity and are abstract for the same reasons and basis as presented above.
Dependent claim 3 provides further details regarding the secure container comprising one or more sensors within the physical compartment of the secure container. The additional element of one or more sensors is described at a high level of generality such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 4 provides further details regarding the one or more sensors disclosing that the one or more sensors comprise a camera that captures images of the physical compartment and where the camera is configured to provide the images to the container administrator computer system. As currently recited it appears that functionality of can capture images and that the camera is configured to provide the images to the container administrator computer system are recited at a high level of generality such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 5 provides further details disclosing that the one or more sensors comprises a weight sensor that generates data corresponding to a weight of an object positioned in the physical compartment and wherein the weight sensor is configured to provide the data to the container administrator computer system. The additional disclosure regarding the one or more sensors is still described at a high level of generality such that it amounts to mere instructions to apply the exception using generic computer component.
Dependent claims 6 and 15 provide further details regarding the second authentication factor noting that is comprises at least one of an alphanumeric code or a computer readable code scannable by a device of the user. The details regarding the authentication factor are provided at a high level of generality such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 7 further discloses a card reader configured to scan a card of the user. The additional element of a card reader is recited a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 8 further discloses details regarding the human machine interface, noting that it is configured to provide the data packet to the container administrator computing system for authenticating the user based on the data packet. The additional elements of a mobile device of the user is presented at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claims 9 and 18 disclose further details regarding a locking device being configured to receive an unlock signal responsive to the user verifying that the secure container is associated with the container administrator computer system and the container administrator computer system authenticating the user. The additional details regarding the ability of the locking device to receive and unlock signal is presented at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 11 discloses details of sensing, by one or more sensors of the secure container system in the secure container a condition within the physical compartment of the secure container. Here the additional element of the one or more sensors as been presented at a high level. This step appears to be receiving data into a generic tool and still describes certain methods of organizing human activity.
Dependent claim 12 discloses transmitting by the secure container system via the network interface to the container administrator computer system data corresponding to the condition. This step is transmitting data at a high level using a generic tool and still describes certain methods of organizing human activity.
Dependent claim 13 discloses that the one or more sensors comprises a camera and wherein the condition comprises an image of an interior of the physical compartment of the secure container. The additional description of the additional element of the sensors being a camera has still been presented at a high level. This step appears to be receiving image data into a generic tool and still describes certain methods of organizing human activity.
Dependent claim 14 discloses that the one or more sensors comprises a weight sensor where the condition comprises data corresponding to the weight of an object within the physical compartment of the secure container. Here again the additional description of the additional element of the sensors being a weight sensor has still been presented at a high level. This step appears to be receiving data regarding weight as a generic tool and still describes certain methods of organizing human activity.
Dependent claim 16 discloses scanning by a card reader of the secure container system, a card of the user to capture data used for authenticating the user. The additional element of a card reader is recited a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
Dependent claim 17 further discloses transmitting the data packet for authenticating the user based on the data packet. The additional element of a mobile device being used to transmit data is using the mobile device as a generic tool and still describes certain methods of organizing human activity.
Dependent claim 20 further discloses the respective locking devices configured to receive and unlock signal responsive to user verifying that the secure container is associated with a computer minister computer system and computer administrator computer system authenticating the user. The additional details regarding the ability of the locking device to receive and unlock signal is presented at a high level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to mere instructions to apply the exception using a generic computer component.
No further additional hardware components other than those found in the respective independent claims is recited, thus it is concluded that the claims are further utilizing the same generic systemization as presented above. The dependent claims do not include any additional elements that currently integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. The additional elements that have been presented in parts of the claim set are not being integrated in a way that can lead to subject matter patent eligibility at present, nor do they serve to be significantly more.
Therefore, Claims 1 and 3-20 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Relevant Prior Art of Record Not Currently Applied
Flynn et al. (US PG Pub. 2019/0333304) (“Flynn”) – discloses secure storage platforms and their application in secure temporary property storage applications are disclosed and comprise: secure
locker systems; secure locker systems comprising emergency access; secure locker systems comprising collapsible lockable compartments; secure storage systems comprising chain of custody management, recording and authentication; redirected delivery including post-delivery redirected delivery, en route delivery and dispatch delivery services comprising chain of custody services; and secure property claim check and car valet systems. (See Flynn Abstract)
Cartwright (US PG Pub. 2021/0035063) (“Cartwright”) - discloses secure access locker banks that enable access to each lockable storage space that is governed electronically by locking and unlocking the lockable storage space upon verification of a user identity at a local user interface (e.g., a graphical user interface) located at the access control module. (See Cartwright para 8) In particular, the access control system may comprise wireless emitters to broadcast signals to provide for a locking opening interface and corresponding signaling. (See Cartwright paras 11 and 79)
Dixon et al. (US PG Pub. 2017/0278063)(“Dixon”) – discloses, in an aspect, an item receptacle that comprises a plurality of sides enclosing an internal volume, a door moveably connected to one of the plurality of sides, the door configured to open and close to allow access to the internal volume; a door sensor configured to detect when the door is opened; a process in communication with the door sensor, the processor configured to receive a signal corresponding to a change in state of the door sensor; a communication device in communication with the processor, the communication device configured to communicate with a central hub; and wherein the processor is configured to store a change of the door sensor to the central hub. (See Dixon para 6)
Glasgow et al. (US PG Pub. 2015/0379796) (“Glasgow”) – discloses a system and method for a handshake authenticated coded locked container are provided. (See Glasgow Abstract) In example embodiments, a digitally encoded lock mechanism that is used by a sender to lock a container before shipping is determined. (See Glasgow Abstract) An access key is received from the recipient that receives the container. (See Glasgow Abstract) An authentication process is performed that determine whether the access key triggers the unlocking of the container and based on a determination that the access key triggers the unlocking of the container, instructions are provided to unlock the container. (See Glasgow Abstract)
Response to Arguments
Applicant's arguments filed March 19, 2026 have been fully considered as further described below.
As to the Double Patenting Rejection:
Examiner disagrees that the double patenting rejections are overcome. (See Applicant’s Arguments dated 03/19/2026, page 9) The rejections have been maintained.
As to the Claim Objections:
Applicant is thanked for the correction to obviate the claim objection previously raised and has accordingly been withdrawn. (Id. at page 9)
As to the Claim Interpretation Section:
Applicant indicates that they do not acquiesce to Examiner’s claim interpretation and appear to indicate that the interpretations as to the independent claims are now moot. (Id. at pages 9-10) Applicant’s amendments clarified some issues and raised others, as updated in the rejection in chief.
As to the 112(a) Rejections:
Applicant disagrees with Examiner’s assertions regarding a “condition” as currently claimed with reference to Claims 11-14. (Id. at pages 10-11) Applicant then notes that specification discloses that the storage space may be empty or not empty or may have a weight sensor that either may return a value of empty or the weight of an item in the secure container and argues that one of ordinary skill would understand that empty or not empty is a condition associated with the storage container. (Id. at page 11)
Examiner disagrees. First, notably in Applicant’s argument there is no assertion that the specification does recite a “condition” as claimed. Secondly, a condition is a broader term that determining if a secure container is empty and could be used to refer to any number of things.
A condition could be anything. For instance, a power outage, a broken lock, failure to close a door, a jammed lock could all be conditions, however are all potential conditions broader than the disclosure of the specification. Third, this is not a 112(b) rejection, nor was one asserted, thus the idea that one skilled in the art would understand the term is not relevant, nor raised. Finally, if the bounds of the term “condition” are as Applicant claims, there should be no issue using the language disclosed by the specification in the claims. The rejection is maintained.
As to the 112(b) Rejections:
Based on the amendments made, the 112(b) rejections have been withdrawn.
As to the 101 Rejections:
The rejection has been updated as noted in the rejection in chief. Applicant presents the newly amended Claim 1 and concludes that the claims are directed toward statutory subject matter under 101. (Id. at pages 12-13)
Applicant disagrees that the claims fall within certain methods of organizing human activity. (Id. at pages 13-15) Applicant argues that the amended claim 1 recites a secure container system comprising a locking device configured to selectively lock and unlock a physical compartment of a secure container, a network interface, a human-machine interface, and where the secure container is configured to receive via a short range wireless communication between the human machine interface and a mobile computing device associated with a user, a first authentication factor comprising a data packet uniquely assigned to a user. (Id. at page 15) The data packet uniquely assigned to a user is presented at a high level and the receipt of a short-range wireless communication may be nothing more than a barcode stored on the mobile computing device. The nature of the human-machine interface is also recited at a high level. This may be nothing more than an ID card stored on a mobile device that is scanned by a barcode reader on the human-machine interface, not dissimilar to any grocery store or fitness center ID barcode used to get discounts or enter a facility.
Applicant continues, noting the claim presents a second authentication factor for displaying, via the human-machine interface an indication verifying that the secure container is associated with the container administrator system where the indication is based on a comparison between a computer readable code generated by an application hosted on the mobile computing device and communicated to the container administrator computing system and the second authentication factor displayed via the human-machine interface. (Id.) Here, the comparison step is disclosed by the specification as the user comparing the codes as seen in paragraph 44 of the specification. The claim broadly discloses the application on the mobile computing device and does not specify details as to how it is connected to the container administrator computing system. Therefore, as claimed, this could broadly be construed as sending a code to the container administrator. The comparison still relies on the user visually comparing the codes to determine if they are the same. This may be nothing more than the user submitting a PIN number and making sure it matches.
The steps are reflective of certain methods of organizing human activity, i.e., following rules or instructions, managing personal behavior and/or commercial interactions as they may reflect no more than retrieving previously purchased goods or picking up items in containers using mechanisms used for entry into locations. (Id. at pages 15-16)
Applicant then asserts that under Step 2A, Prong Two, the claims are integrated into a practical application, presenting the problems with unsecure containers and arguing that mutual authentication provides for increased security by providing assurances to the user that the secure container in which the user is depositing or storing an item is in fact managed, controlled or otherwise operated by the purported entity/institution, citing to paragraph 40 of their specification. (Id. at pages 17-18) While Applicant asserts that the claims provide a unique form of mutual authentication that allows for increased security and thus the claims reflect a practical application, Examiner is of another opinion. (Id. at page 18) The mechanisms disclosed are at a high level and do not appear to reflect a unique or improvement in security.
Applicant then argues that the claims are significantly more. (Id. at page 19) Applicant reasserts the previous arguments and concludes that the claims are subject matter patent eligible. (Id. at pages 19-20) Examiner is not persuaded and maintains the 101 rejection.
As to the 103 Rejections:
There is no prior art rejection being applied at this time. (See Applicant Arguments dated 07/24/2025, pages 14-16)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMBREEN A. ALLADIN whose telephone number is (571)270-3533. The examiner can normally be reached Monday - Friday 9-5.
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 March 31, 2026