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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “locking mechanism” claim 9, line 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6-11, 16, 17, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 6, line 1, “the extension panel” lacks antecedent basis. It is noted the “extension panel” is first introduced in claim 2, line 1. It is noted claims 7-9 and 20 also recite “the extension panel”.
In claim 6, line 6, “the extended position” lacks antecedent basis. It is noted the “extended position” is first introduced in claim 2, line 3.
Claim 16 is incomplete for failing to recite sufficient structure to enable the claimed function of “detection of the parcel within a threshold proximity to the delivery shelf” (lines 2-3). It appears a proximity sensor must be claimed, see claim 10 for sufficient structure.
In claim 17, line 2, “the extension panel” lacks antecedent basis. It is noted the “extension panel” is first introduced in claim 2, line 1.
In claim 17, line 3, “the retracted position” lacks antecedent basis. It is noted the “retracted position” is first introduced in claim 2, line 4. It is noted “the retracted position” is again recited in claim 17, lines 4-5.
In claim 17, lines 3-4, “the extended position” lacks antecedent basis. It is noted the “extended position” is first introduced in claim 2, line 3. It is noted “the extended position” is again recited in claim 17, line 4.
Claims 7-11 and 20 are rejected under 35 U.S.C. 112(b) as they depend from a rejected claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 2 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 12,108,897. This is a statutory double patenting rejection.
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, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 11, 13, 14, 15, 16, 17, 18, 12, 19, and 9, respectively, of U.S. Patent No. 12,108,897. Although the claims at issue are not identical, they are not patentably distinct from each other.
Independent claim 1 of the instant application is identical to claim 1, lines 1-11, of the related patent.
Dependent claims 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, and 20 of the instant application clearly correspond to claims 2, 3, 4, 5, 6, 7, 8, 10, 11, 13, 14, 15, 16, 17, 18, 12, 19, and 9, respectively of the related patent.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guanch et al. (US#2019/0320836).
Regarding claim 1, Guanch discloses a delivery shelf 42, comprising: a platform 46 hingedly affixed to a mounting base 12; wherein a rear edge 48 of the platform is hingedly affixed along a lower edge of the mounting base, such that the platform is selectively movable between a deployed position (Fig. 6) and a storage position (Fig. 1); and wherein the platform is substantially perpendicular to the mounting base when in the deployed position (Fig. 6) and an upper surface of the platform rests flush against a front surface 20 of the mounting base when the platform is in the storage position (Fig. 5). Per [0023], “The storage unit 42 comprises a bottom wall 46 that has a back edge 48 which is hingedly coupled to the first surface 20 of the panel 12. The bottom wall 46 lies against the first surface 20 of the panel 12 when the storage unit 42 is positioned in the collapsed position having the bottom wall 46 being positioned in the recess 18. The bottom wall 46 extends away from the first surface 20 and the bottom wall 46 is horizontally oriented when the storage unit 42 is positioned in the deployed position.”
Claims 1 and 19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sosan (US#5624071).
Regarding claim 1, Sosan discloses a delivery shelf, comprising: a platform 28 hingedly affixed 48,50 to a mounting base 20; wherein a rear edge of the platform is hingedly affixed along a lower edge (lower/bottom wall) of the mounting base (Fig. 3), such that the platform is selectively movable between a deployed position (Fig. 3) and a storage position (Fig. 1); and wherein the platform is substantially perpendicular to the mounting base when in the deployed position (Fig. 3) and an upper surface (interior surface of platform 28) of the platform rests flush against a front surface of the mounting base when the platform is in the storage position (Fig. 1).
Regarding claim 19, further comprising at least one hook 34 (Fig. 4) disposed on the lower edge of the mounting base (Fig. 3).
Claim Rejections - 35 USC § 103
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 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Guanch et al. (US#2019/0320836) in view of Aliahmad (US#2022/0089317).
Regarding claims 14 and 15, Guanch fails to disclose a control panel affixed to a side of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device, including camera configured to transmit a video image to the remote device.
However, as evidenced by Aliahmad, such a configuration is known in the parcel delivery art, see paragraphs [0092] and [0082], lines 23-27 and 39-47 and Figs. 10-11, wherein mounting base 200 including a control panel (processor 1110 with user interface/display 1170/290) affixed to a side 208-2 of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device (smart phone), including a camera configured to transmit a video image to the remote device (smart phone).
Therefore, as evidenced by Aliahmad, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Guanch by including a control panel affixed to a side of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device, including camera configured to transmit a video image to the remote device. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion of a control panel transmitting an alert, including a video image from a camera, by a wireless transceiver to a remote device would allow for remote monitoring of the delivery shelf thereby improving security and functionality.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Guanch et al. (US#2019/0320836) in view of Newcomb (US#2020/0013008.
Regarding claim 14, Guanch fails to disclose a control panel affixed to a side of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device, and wherein the remote device further comprises a delivery application thereon configured to track a location of a parcel, whereupon detection of the parcel within a threshold proximity to the delivery shelf, the platform is configured to move to the deployed position via actuation of a platform motor disposed within the mounting base and operably connected to the platform.
However, as evidenced by Newcomb, such a configuration is known in the parcel delivery art, see Figs. 2-3 and paragraph [0045], wherein a control panel (communication module) is affixed to a side of the mounting base 100, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device (mobile phone), and wherein the remote device further comprises a delivery application thereon configured to track a location of a parcel, whereupon detection of the parcel within a threshold proximity to the delivery container, the box 160 is configured to automatically move to the deployed position (i.e. via actuation of an inherent motor) disposed within the mounting base and operably connected to the box. Per [0045], “The landing station 100 also comprises a communication module (Not Shown). Here, the user and the seller can also track the live location of the drone 200 by using their mobile phone, computer, laptop tablet or any other suitable device. The landing station 100 has a proximity sensor (Not Shown) which can identify when the drone arrives in the proximity of the landing station 100. Upon detection of the drone 200 the retractable receiving box, 160 expands outwardly…”.
Therefore, as evidenced by Newcomb, it would have been obvious to one ordinary skill in the art before the effective filing date of the claimed invention to modify Guanch to include a control panel affixed to a side of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device, and wherein the remote device further comprises a delivery application thereon configured to track a location of a parcel, whereupon detection of the parcel within a threshold proximity to the delivery shelf, the platform is configured to move to the deployed position via actuation of a platform motor disposed within the mounting base and operably connected to the platform. The rational for supporting this conclusion of obviousness is the proposed combination is based upon combining prior art elements according to known methods to yield predictable results. Moreover, all the claimed elements are known in the prior art and one skilled in the art could combine the elements as claimed by known methods with no change in their respective functions, and the combination yield nothing more than predictable results to one of ordinary skill in the art (MPEP 2143 and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)). The inclusion a control panel affixed to a side of the mounting base, wherein the control panel comprises a notification control thereon, whereupon actuation of the notification control, an alert is transmitted by a wireless transceiver disposed within the control panel to a remote device, and wherein the remote device further comprises a delivery application thereon configured to track a location of a parcel, whereupon detection of the parcel within a threshold proximity to the delivery shelf, the platform is configured to move to the deployed position via actuation of a platform motor disposed within the mounting base and operably connected to the platform. The inclusion of a control panel transmitting an alert by a wireless transceiver to a remote device would allow for remote monitoring of the delivery shelf thereby improving security and functionality. Further, the remote device comprising a delivery application thereon configured to track a location of a parcel, whereupon detection of the parcel within a threshold proximity to the delivery shelf, the platform is configured to move to the deployed position via actuation of a platform motor disposed within the mounting base and operably connected to the platform would enhance delivery via providing real-time user data and automation of operation.
Allowable Subject Matter
Upon filing an approved terminal disclaimer, claims 3-5, 12, 13, and 18 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Upon filing an approved terminal disclaimer, claims 6-11, 17, and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 3, the prior art of record fails to disclose or suggest the delivery shelf as claimed in detail, further comprising a pair of lateral panels telescopically disposed within opposing lateral edges of the platform, wherein the pair of lateral panels are selectively movable between an extended position and a retracted position.
Regarding claim 12, the prior art of record fails to disclose or suggest the delivery shelf as claimed in detail, further comprising a primary display disposed on a lower surface (i.e. opposite the claimed upper surface of claim 1) of the platform, wherein the primary display is operably connected to a remote device and configured to display media received from the remote device.
Regarding claim 17, the prior art of record fails to disclose or suggest the delivery shelf as claimed in detail, further comprising the assumed extension panel of claim 2, and a panel motor disposed within the platform and operably connected to the extension panel, wherein the panel motor is configured to selectively move the extension panel from the retracted position to the extended position when actuated in a first direction, and from the extended position to the retracted position when actuated in a second direction.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM L MILLER whose telephone number is (571)272-7068. The examiner can normally be reached 9:30 - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason San can be reached at (571) 272-6531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM L. MILLER
Primary Examiner
Art Unit 3677
/WILLIAM L MILLER/Primary Examiner, Art Unit 3677