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 .
DETAILED ACTION
This communication is a non-final action in response to preliminary amendment filed on 01/27/2025. Claims 1-20 are pending.
Priority
MPEP 2152.01 states “(B) If the application is a continuation-in-part of an earlier U.S. application or international application, any claims in the new application not supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application. Any claims which are fully supported under 35 U.S.C. 112 by the earlier parent application have the effective filing date of that earlier parent application.”
In this case, the application (18904528, hereinafter ‘528 application) is a CIP of 14481078. All claims include the limitation of repeating previous steps when a selected permutation fails (steps g for both independent claims 1 and 12). This limitation is not found in any of the disclosure in the priority documents claimed by Applicant.
At most, application 15429039 (patent number 10489739, hereinafter ‘039 application) discusses in 0078 of spec in disclosure filed on 02/09/2017 that “For example, if more than one shipping materials configuration is available for the object (e.g., multiple boxes can fit the object), Block S260 can include calculating quotes for multiple shipping materials configurations (e.g., to present to a user; to determine a ranking based on shipping cost, shipment speed, etc.).” However, there is no discussion about a looping mechanism at all, instead, it merely states that multiple quotes are calculated and displayed without discussing in what manner these quotes are calculated. Let alone the claimed feature of discarding options that doesn’t fit. In fact, the priority document only teaches calculating quotes for boxes (shipping material permutations) that can actually fit as the disclosure states “multiple boxes can fit the object”, meaning those that doesn’t fit wouldn’t be quoted. Therefore, the parent applications does not fully support claims 1-20.
Examiner notes since none of the claims are supported by the specification and claims of the parent application, they are given the effective filing date of 10/02/2024, the actual filing date of ‘528 application.
Information Disclosure Statement
The IDS filed on 12/04/2024 is considered.
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.
Claims 1-20 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.
MPEP 608.04(b) states “preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a).”
As discussed above, step g of both claims 1 and 12 are not found in any of the parent applications, including the specification filed on 10/02/2024. The ’528 application’s specification also repeat ‘528 application’s 0078 regarding creating multiple quotes. For the reasons shown above, it does not disclose claimed looping mechanism.
Further, step f of both claim 1 and 12 also requires “selected shipping material permutation” to occur before comparing object dimensions. In short, claims 1 and 12 require selecting a shipping material permutation and generation of quotes before checking if object would fit the selected box(es). However, as noted above, the original disclosure only teach calculating quotes for boxes that can fit the objects. Therefore, this feature is also not disclosed but examiner recognize this may be a drafting oversight.
These features are first found on preliminary amendment filed on 01/27/2025, after the filing date of the ‘528 application. Therefore, they are not part of the original disclosure and therefore are new matters.
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 1-20 are rejected under 35 U.S.C. 101 because they recite an abstract idea without significantly more.
Step 2A prong 1
As per claim 1, steps a-g, except for object characteristic measurer (OCM), recites an abstract idea. Specifically, these steps describes a series of steps used to determine a shipping material permutation (e.g., box) that is used to ship objects, wherein rate quotes are also determined as part of process. This describes a business relationship and following rules, which falls into certain methods of organizing human activities. Further, these steps can also performed completely in human mind where a person can estimate whether something can fit standardized boxes and if so, what are the charges to ship the item. Therefore, claim 1 also falls into mental process. In any case, claim 1 would recite an abstract idea.
Step 2A prong 2
The additional element OCM is merely used to collect object dimensions. The OCM can for example, be a smartphone, which is a generic computer component discussed in high generality. It’s merely used by being the source of a data (i.e., receiving … from an OCM …), this is mere instructions to implement the abstract idea on a computer, as well as generally linking the abstract idea to computer field of use. Even viewed as an ordered combination, the additional elements are still nothing more than mere instructions to implement the abstract idea on a computer, as well as generally linking the abstract idea to computer field of use. Therefore, it does not integrate the abstract idea into practical application. Claim 1 is directed to an abstract idea.
Step 2B
As discussed above in step 2A prong 2, where the analysis is still applicable, the additional element, whether viewed individually or as an ordered combination, are nothing more than mere instructions to implement the abstract idea on a computer, as well as generally linking the abstract idea to computer field of use. Therefore, claim 1 does not include an inventive concept and the claim is not eligible.
Claims 2-10 merely further limit the abstract idea by introducing additional rules to be performed. Examiner further notes 3D modeling of claim 6, at this level of breadth, can be a person using pen and paper to draw diagrams to see if an object would fit. Claim 11 further includes additional element API, which is still just generally linking the abstract idea in a particular field of use, whether viewed individually or as an ordered combination. Therefore, these claims are still not eligible.
Claim 12-20 can be similarly analyzed as claim 1-11 and would arrive at the same conclusion.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Streebin (US 20230252396) in view of Singh (US 20230162127)
Examiner notes Streebin is published on 08/10/2023, which is more than 1 year prior to effective filing date of present invention (‘528 application) of 10/02/2024. See Priority section above for detail.
Examiner notes Applicant states in Remarks filed on 01/27/2025 that “amended claims are supported at least by: [0017], [0034], [0049], [0060], [0063], [0064], [0069], [0070], [0072], [0076], [0077], [0078], [0082], and [0088].” The content of these paragraphs quoted also appear in Streebin.
As per claim 1, Streebin discloses a method, comprising:
a) determining a shipment batch comprising a set of objects (0069, “batching a plurality of objects into a shipment batch”):
b) receiving set of object characteristics for the set of objects from an object characteristic measurer (OCM), wherein the set of object characteristics comprise a set of object dimensions (0069, “receiving an additional dimensions dataset for a plurality of additional objects from the ODM”);
c) determining a set of shipping material permutations for the shipment batch (0078, “if more than one shipping materials configuration is available for the object (e.g., multiple boxes can fit the object), Block S260 can include calculating quotes for multiple shipping materials configurations”)
d) determining a set of service level rate quotes for each of the set of shipping material permutations (0078, “if more than one shipping materials configuration is available for the object (e.g., multiple boxes can fit the object), Block S260 can include calculating quotes for multiple shipping materials configurations”):
e) selecting a shipping material permutation from the set of shipping material permutations (0079, “prepare and/or print a shipping label based on one or more service levels determined in Block S260.”);
f) comparing a dimension of the shipping materials within t
Streebin does not but Singh teaches comparing selected shipping material permutation with dimension and repeating selecting and comparing steps without the selected permutation if selected permutation fails based on comparison (see at least Singh, 0090, “If the carton currently being used to ship a given order has less volume than the cubed carton associated with that order as a result of the previously performed order cubing operation, the cubed carton is discarded from the set of cubed cartons”).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Singh’s cubing optimization with Streebin’s shipping material selection for the purpose of reducing shipping cost (Singh: Fig. 3, step 4).
As per claim 2, Streebin further discloses the method of Claim 1, wherein the selected shipping material permutation comprises the shipping material permutation with a lowest service level rate quote (See at least Streebin, 0065. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 3, Streebin further discloses the method of Claim 1, wherein the selected shipping material permutation comprises the shipping material permutation with a shortest delivery speed (See at least Streebin, 0034. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 4, Streebin further discloses the method of Claim 1, wherein the dimension of the set of objects comprise a combined dimension of the set of objects, determined based on a packing configuration for the set of objects (See at least Streebin, 0069. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 5, Streebin further discloses the method of Claim 4, wherein the packing configuration is determined by determining a plurality of packing configurations for the set of objects and selecting the packing configuration from the plurality of packing configurations (See at least Streebin, 0078. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025)
As per claim 6, Streebin further discloses the method of Claim 1, wherein comparing the dimensions of the shipping materials with the dimensions of the set of objects comprises using a set of 3D models of the shipping materials and a set of 3D models of the set of objects (See at least Streebin, 0024. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 7, Streebin further discloses the method of Claim 1, wherein determining the set of service level rate quotes for each of the set of shipping material permutations comprises comparing the set of object characteristics for the set of objects to a set of object characteristic requirements for service levels provided by a set of shipping carriers (see at least Streebin, 0044-0045. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 8, Streebin further discloses the method of Claim 1, wherein the set of shipping material permutations comprise at least one permutation comprising a cardboard box (see at least Streebin, 0076. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 9, Streebin further discloses the method of Claim 1, wherein determining the service level rate quote comprises determining a rate for the respective shipping material permutation for the respective service level (see at least Streebin, 0078. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 10, Streebin further discloses the method of Claim 1, wherein comparing dimensions of the shipping materials with the dimensions of the set of objects comprises determining different object subsets from the set of objects and comparing combined dimensions of each object subset to dimensions of each of the shipping materials in the selected shipping material permutation (see at least Streebin, 0069. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 11, Streebin further discloses the method of Claim 1, wherein determining the set of service level rate quotes comprises receiving service level rate quotes from each of a plurality of carriers via a set of carrier APIs (see at least Streebin, 0044-0045. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 12, Streebin discloses a shipping automation system comprising:
a non-transitory computer readable medium (0031); and
a processing system, comprising a processor, coupled to the non-transitory computer readable medium (0031), the processing system configured to:
a) determine a shipment batch comprising a set of objects (0069);
b) determine a set of object characteristics for the set of objects generated by an object characteristic measurer (OCM), wherein the set of object characteristics comprise a set of object dimensions (0069);
c) determine a set of shipping material permutations for the shipment batch,
wherein each shipping material permutation is associated with a set of object dimension requirements (0078);
d) select a shipping material permutation from the set of shipping material permutations based on a respective set of service level rate quotes (0078);
e) determine a set of object subset permutations from the set of objects (0069);
f) facilitate shipping label purchase when the dimensions of an object subset permutation satisfies the set of object dimension requirements for the selected shipping material permutation (0078-0079); and
Streebin does not but Singh teaches comparing selected shipping material permutation with dimension and repeating selecting and comparing steps without the selected permutation if selected permutation fails based on comparison (see at least Singh, 0090, “If the carton currently being used to ship a given order has less volume than the cubed carton associated with that order as a result of the previously performed order cubing operation, the cubed carton is discarded from the set of cubed cartons”).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Singh’s cubing optimization with Streebin’s shipping material selection for the purpose of reducing shipping cost (Singh: Fig. 3, step 4).
As per claim 13, Streebin further discloses the shipping automation system of Claim 12, wherein the object characteristic measurer comprises a personal user device (see at least Streebin, 0069. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 14, Streebin further discloses the shipping automation system of Claim 12, wherein the selected shipping material permutation comprises the shipping material permutation with a lowest service level rate quote (See at least Streebin, 0065. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 15, Streebin further discloses the shipping automation system of Claim 12, wherein the set of object characteristics further comprise a set of object weights, wherein the set of service level rate quotes are determined based on the set of object weights (See at least Streebin, 0061. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 16, Streebin further discloses the shipping automation system of Claim 12, wherein the set of shipping material permutations comprise shipping material permutations with volumes at least as large as a collective volume of the set of objects, determined based on the set of object dimensions (See at least Streebin, 0078. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 17, Streebin further discloses the shipping automation system of Claim 12, wherein the processing system is further configured to automatically generate customs forms for international shipments based on the customs information for the shipment batch (See at least Streebin, 0082. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 18, Streebin further discloses the shipping automation system of Claim 12, wherein determining the object subset permutations comprise classifying each object within the set of objects and grouping objects sharing a common classification (See at least Streebin, 0060. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
As per claim 19, Streebin further discloses the shipping automation system of Claim 12, wherein determining whether the dimensions of an object subset permutation satisfies the set of object dimension requirements for the selected shipping material permutation comprises determining a set of subset dimensions for each object subset within the object subset permutation, wherein each subset dimension within the set of subset dimensions is determined based on a packing configuration for the respective object subset (See at least Streebin, 0078, 0069. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025)
As per claim 20, Streebin further discloses the shipping automation system of Claim 12, wherein determining whether the dimensions of an object subset permutation satisfies the set of object dimension requirements for the selected shipping material permutation is determined based on 3D models of the object subset and a 3D models of the shipping materials within the selected shipping material permutation. (See at least Streebin, 0024. Alternatively, please see the cited paraphs listed in Remarks filed on 01/27/2025).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Resha Desai can be reached at 571-270-7792. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628