DETAILED ACTION
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 the Claims
Claims 1-20 were previously pending. Claims 1-3, 5-9, 11, 13-.15, 17, and 19-20 were amended in the reply filed June 17, 2026. Claims 1-20 are currently pending.
Response to Arguments
Applicant's arguments filed with respect to the rejection made under § 101 have been fully considered but they are not persuasive. "[T]he amended claims recite a specific technical architecture for integrating heterogeneous transportation management systems - an architecture defined by particular technical operations that have no analog in human commercial activity." Remarks, 10. The systems have been addressed as additional elements. The functions they are performing (i.e., coordinating a shipping transaction) are plainly certain methods of organizing human activities as set forth in the rejection. The presence of additional elements in the claims does not mean that an abstract idea is not also recited at this point in the framework. "Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?" MPEP 2106.04 II. A. 1.
Applicant also argues that the claims recite additional elements that integrate the abstract idea into a practical application. In doing so, Applicant leans heavily on the fact that the claims recite communications between "heterogenous" systems. The disclosure provides an example of "heterogenous" systems: "In some scenarios, the TMS implemented via the server 110 and the open marketplace system 130 are heterogeneous in that the open marketplace system 130 is logically and/or physically separated from the TMS." Published Specification, ¶ 0049. Thus, all that is required that to fulfill the claimed requirement that the systems are "heterogeneous" is that the computers are physically separate and communicate, e.g., over the Internet. Two physically separate computers communicating over a network is not a technological improvement.
"The Specification identifies a specific technical problem: existing transportation management systems operate as separate, siloed systems that are unable to communicate with one another, preventing transportation companies from accessing relevant transportation data across different platforms. See Specification, Paragraph [0039] ('the inhouse transporter of a transportation company in an existing transportation management system may not have enough capacity to transport loads,' and 'the personnel of the transportation company are required to search each third-party transportation company or a proper individual transporter')." Remarks, 12. These are business coordination problems. Every generic computer connected to the Internet has the technological ability to make these communications.
With respect to the newly recited API (see Remarks, 12-13), this is another generic computer network element facilitating an abstract endeavor. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021) ("The claims apply the abstract idea on a computer by replacing the human intermediary with a GUI and API, but as the Board concluded, representative claim 1 'merely recites generic and conventional computer components (i.e., "processor," "GUI," and "API") and functionality for carrying out' the abstract idea.").
With respect to "dynamic cross-system data acquisition" and "automated transporter determination based on load data" (Remarks, 13) these describe parts of the abstract idea. Assigning a load to a carrier is unquestionably a commercial activity, and data-gathering steps cannot make an otherwise nonstatutory claim statutory. CyberSource v. Retail Decisions, 654 F.3d 1366, 1394 (Fed. Cir. 2011). Accordingly, Applicant has not demonstrated that the claims recite additional elements that integrate the abstract idea into a practical application. "As many cases make clear, even if a process of collecting and analyzing information is limited to particular content or a particular source, that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) (citation and quotation marks omitted).
Applicant also argues that the claims recite "significantly more" than the abstract idea, but only provides a general allegation. Remarks, 15. Accordingly, the rejection is maintained.
Applicant's arguments with respect to the rejections made under § 102 have been fully considered but are moot in view of the new ground of rejection.
Election/Restrictions
Newly submitted claims 6-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Claims 1-5, drawn to a system, classified in G06Q 10/0834 & G06Q 30/0641.
II. Claims 6-20, drawn to a method and medium, classified in G06Q 10/0834 & G06Q 10/06316.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as using an automation rule template. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: the inventions have acquired a separate status in the art in view of their different classification and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The differences between the inventive groups would require time-consuming differences in search procedure. Applicable prior art is likely to be found in different areas and would need to be separately discovered, analyzed, and tailored to construct rejections for the different inventions, or to determine their allowability. Search strings for one invention are not likely to uncover relevant prior art usable for the other two inventions without multiple independent and distinct searches. The applicable CPC subgroups are relatively large areas that can only be reviewed using directed text searching and by utilizing crossover searches into other areas specified for each invention. The inventions also present separate, non-overlapping issues that would need to be individually analyzed and possibly addressed via rejections under §§ 101 & 112.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 6-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-5 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-5, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
receive load data corresponding to a load;
dynamically obtain open marketplace transporter information from the open marketplace;
provide one or more internal transporter indications and an open marketplace transporter indication based on the open marketplace transporter information from the open marketplace;
determine, based on the load data, a selected transporter indication among the one or more internal transporter indications and the open marketplace transporter indication;
generate a first order associated with the load based on the load data and the selected transporter indication;
transmit the first order to a client corresponding to the selected transporter indication in response to the selected transporter indication being from the one or more internal transporter indications; and
transmit the first order to the open marketplace in response to the selected transporter indication being the open marketplace transporter indication.
These limitations taken together qualify as a certain method of organizing human activities because they recite collecting, analyzing, and outputting information for arranging transportation services for an order either with an internal transporter or a transporter on an open marketplace (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices; commercial interactions (including marketing or sales activities or behaviors; business relations)).
The invention shares similarities with other abstract ideas held to be non-statutory by the courts (see Electronic Comm. v. Shopperschoice.com, LLC, 958 F.3d 1178, 1181 (Fed. Cir. 2020)—business practices designed to advise customers of the status of delivery of their goods, similar because at another level of abstraction the claims could be characterized as business practices designed to arrange the of delivery of goods to customers). See also GT Nexus, Inc. v. Inttra, Inc., 2015 WL 6747142, at *5 (Fed. Cir. 2015) (unpublished) (finding claims directed to "booking and tracing container shipments through a third party is an abstraction" because the use of a third party intermediary and shipping of goods are established and "conventional business practice[s]"); Wireless Media Innovations, LLC v. Maher Terminals, LLC, 100 F. Supp. 3d 405, 415 (D.N.J. 2015) (finding the "process of monitoring and moving shipping containers and collecting the relevant data as to the location of the shipping containers" is "an abstraction").
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (system/server system; network interface configured to communicatively couple the server system to a network; memory storing computer-executable instructions; one or more electronic processors, the one or more electronic processors configured to retrieve and execute the computer-executable instructions; graphical user interface; client device—all recited at a high level of generality).
Claim 1 also recites "generate, using an integration application programming interface (API), a communication link over the network between the server system and an open marketplace system to integrate the server system and the open marketplace system, wherein the server system and the open marketplace system are heterogeneous." APIs are generic network tools for exchanging data. See cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021) ("The claims apply the abstract idea on a computer by replacing the human intermediary with a GUI and API, but as the Board concluded, representative claim 1 'merely recites generic and conventional computer components (i.e., "processor," "GUI," and "API") and functionality for carrying out' the abstract idea."). With respect to integrating heterogeneous systems over a communication link, this merely requires two physically separate computers communicating over a network. "In some scenarios, the TMS implemented via the server 110 and the open marketplace system 130 are heterogeneous in that the open marketplace system 130 is logically and/or physically separated from the TMS." Published Specification, ¶ 0049. As such, when viewed in combination these elements also amount to nothing more than generally linking the abstract idea to implementation via a particular technological environment (e.g., computers and the Internet).
Although the claims have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole 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. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (system/server system; network interface configured to communicatively couple the server system to a network; memory storing computer-executable instructions; one or more electronic processors, the one or more electronic processors configured to retrieve and execute the computer-executable instructions; graphical user interface; client device—see published Specification ¶¶ 0042-45, 51 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
Similarly, with respect to "generate, using an integration application programming interface (API), a communication link over the network between the server system and an open marketplace system to integrate the server system and the open marketplace system, wherein the server system and the open marketplace system are heterogeneous," the Specification also describes these elements without any significant technical detail. "In some scenarios, the TMS implemented via the server 110 and the open marketplace system 130 are heterogeneous in that the open marketplace system 130 is logically and/or physically separated from the TMS." Published Specification, ¶ 0049. See also ¶ 0141 describing the conventional use and functions of APIs to communicate data between two systems. See also cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021) ("The claims apply the abstract idea on a computer by replacing the human intermediary with a GUI and API, but as the Board concluded, representative claim 1 'merely recites generic and conventional computer components (i.e., "processor," "GUI," and "API") and functionality for carrying out' the abstract idea.").
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). 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. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims but for those addressed below merely set forth further refinements of the same abstract idea identified above without changing the analysis already presented (i.e., they merely narrow the same abstract idea identified above without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general technological environment and instructions to implement the abstract idea as the independent claims (i.e., a generic computer/server).
Dependent Claims Step 2B:
The dependent claims merely use the same general technological environment and instructions to implement the abstract idea. Moreover, the Specification also indicates this is the routine use of known components for the same reasons presented with respect to the elements in the independent claims above. Accordingly, they are not directed to significantly more than the exception itself, and are not eligible subject matter under § 101.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Fenelon, U.S. Pat. Pub. No. 2006/0173700 (Reference A of the PTO-892 part of paper no. 202624) in view of Coles, et al., U.S. Pat. Pub. No. 2016/0063436 (Reference L of the PTO-892 part of paper no. 202624).
As per claim 1, Fenelon teaches an electronic transportation management system comprising:
a server system (¶¶ 0091-92) comprising:
a network interface configured to communicatively couple the server system to a network (¶¶ 0091-92),
a memory storing computer-executable instructions (¶¶ 0091-92), and
one or more electronic processors, the one or more electronic processors configured to retrieve and execute the computer-executable instructions (¶¶ 0091-92) to cause the server system to:
generate a communication link over the network between the server system and an open marketplace system to integrate the server system and the open marketplace system, wherein the server system and the open marketplace system are heterogeneous (¶¶ 0042, 91),
receive load data corresponding to a load (¶¶ 0044, 66; Fig. 15),
dynamically obtain, over the network via the communication link, open marketplace transporter information from the open marketplace system (¶ 0044),
provide, via one or more graphical user interfaces, one or more internal transporter indications and an open marketplace transporter indication based on the open marketplace transporter information from the open marketplace system (¶ 0044; Fig. 11),
determine, based on the load data, a selected transporter indication among the one or more internal transporter indications and the open marketplace transporter indication (¶ 0044, 66; Fig. 11),
generate a first order associated with the load based on the load data and the selected transporter indication (¶¶ 0083-84),
transmit, over the network via the network interface, the first order to a client device corresponding to the selected transporter indication in response to the selected transporter indication being from the one or more internal transporter indications (¶¶ 0055-56, 84-85—shipment assigned to internal carrier, ¶ 0087—tracking number transmitted), and
transmit, over the network via the network interface, the first order to the open marketplace system in response to the selected transporter indication being the open marketplace transporter indication (¶¶ 0083-85—shipment assigned to major carrier shipping service, ¶ 0087—tracking number transmitted).
Fenelon does not explicitly teach generating a communication link using an integration application programming interface (API); which is taught by Coles (¶¶ 0033-34). It would have been prima facie obvious to incorporate this element for the same reason it is useful in Coles—namely, to easily transfer data between remote systems. Moreover, this is merely a combination of old elements in the art of shipping. In the combination, no element would serve a purpose other than it already did independently, and one skilled in the art would have recognized that the combination could have been implemented through routine engineering producing predictable results.
As per claim 2, Fenelon in view of Coles teaches claim 1 as above. Fenelon further teaches the load data includes a pickup location and a drop-off location (¶¶ 0018, 51, 56).
As per claim 3, Fenelon in view of Coles teaches claim 1 as above. Fenelon further teaches the server system is further to generate a preorder based on the load data (¶ 0044 (see published Specification ¶ 0054—"In some examples, a preorder indicates an order without an assigned transporter.")), and wherein to generate the first order, the server system is further to: assign the selected transporter indication to the preorder to generate the first order (¶¶ 0083-85).
As per claim 4, Fenelon in view of Coles teaches claim 1 as above. Fenelon further teaches the one or more internal transporter indications is indicative of an inhouse transporter or one or more partner transporters (¶ 0044).
As per claim 5, Fenelon in view of Coles teaches claim 1 as above. Fenelon further teaches the server system is further to: generate a second order based on second load data (¶ 0082; Fig. 15); and combine the first order and the second order based on at least one of: a pickup location, a drop-off location, a delivery date, a status indication, or a route from the pickup location to the drop-off location of each of the first order and the second order (¶ 0051—Pouch Routes; ¶¶ 0084-85—status; see also Fig. 17 showing drop-off locations; as well as ¶ 0042 & Fig. 15 showing the orders originating from the same pickup location (i.e., the company mailroom)).
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 DANIEL VETTER whose telephone number is (571)270-1366. The examiner can normally be reached M-F 9:00-6:00.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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