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 final action in response to amendment filed on 05/14/2026. Claims 1-22 are pending.
Priority
The priority date is given to claims 1-20, 22 is 05/24/2016 for at least the reason that raw data and 3D model building is not found in earlier filed parent document. Examiner first locate these feature in provisional application 62340788.
Claim 21 is given the priority date of 10/02/2024.
Response to Argument
Applicant’s argument directed to priority is persuasive except for claim 21.
Claims 1-20, 22 is given priority date of 05/24/2016.
Regarding claim 21, the argument is not persuasive. Applicant first argues that 0086’s executing steps in suitable temporal order supports the limitation, examiner respectfully disagree.
In the specification, quotes are determined in response to determined service level and service level is determined in response to requirement being met. Therefore, prior to generating quotes, whether the requirement is met has already been performed. Changing such order wouldn’t be a suitable temporal order as it means some of the required limitation to make determination would be missing.
In addition to 0078, which will be discussed further later; Applicant’s Fig. 6 and 8 makes such relationship clear. In Fig. 6, “compare object characteristics and reqs” is performed between S295 and S250 (determine service level), which then leads to S252 “generate rate quotes for service levels” (emphasis added). Therefore, service level and quotes are only generated for materials that meeting requirements (e.g., only on boxes that will fit). Similarly, in Fig. 8, S250, service level is determined “based on object type, shipping materials, weight dimensions (e.g., comparing 3D model to 3D packaging models)” (emphasis added). Shipping material is determined in S260, based on object type classified in S242. Therefore, both Fig. 6 and Fig. 8 shows that determination on whether the box would fit is performed prior to claim 12’s step d. Similarly, in 0078, it is first decided that more than one box can fit the object and then calculate quotes for multiple boxes. Therefore, again, 0078 also shows determining requirement being met no later than step d of claim 12. Therefore, Applicant’s argument based on 0086 is not persuasive.
Applicant’s argument based on 0078 is also not persuasive as 0078 clearly shows a determination of availability (which boxes will fit) being performed prior to calculation of quotes. Therefore, it doesn’t show discarding a selected shipping material permutation after determining quotes. For at least the above reasons, the 112(a) rejection is being maintained for claim 21.
Applicant’s argument directed to 101 rejection has been fully considered but are not persuasive.
Applicant first argues that predicting a set of 3D geometries from raw data require computer hardware and network. Examiner respectfully disagree with this characterization.
Predicting a set of 3D geometries can be performed manually by a person looking at an object or a person receiving dimension data. For illustration, see Rotman (US 9142035), Fig. 3, item 308 and drawing of 3D object on lower left corner. A similar data table can be provided and approximate 3D geometric can be manually determined. With the above illustration in mind, the raw data sampled from OCM would be nothing more than merely generally linking the abstract idea onto the field of use in step 2A prong 2 at this level of breadth.
Examiner would note that if this step is further amended with additional technical detail where it would not be reasonable to perform the 3D geometries using a particular set of rules for a particular 3D geometry model generation problem, the above analysis may no longer by applicable. Examiner also recommend reviewing MCRO where a task is found eligible because it is been performed differently from how a human would have perform the same tasks.
Applicant then goes on to argue that claim does not fall into certain methods of organizing human activities, examiner respectfully disagree as the claim clearly discuss figuring out rate quotes and select a shipping material permutation. This is about picking a way to ship a package based on quote. This at least falls into business relationship. Therefore, the argument is not persuasive.
Regarding Applicant’s further argument directed to math, examiner agree but conclusion of step 2A prong 1 would remain in view of above.
Applicant then argues the claimed invention improves technology of shipping longlisting by automating the standardization. Examiner respectfully disagree for at least the reason that at this level of breadth, the claimed additional elements are used as nothing more than generally linking the abstract idea to a particular field of use. As noted above, the standardization of making 3D geometries can be manually performed and therefore, this is merely using a computer to automate manual process. This would not be an improvement to a technology. Examiner would note the suggestion above regarding particularity of the step would applies here and the above analysis may no longer applicable if the scope of the claim has been amended to recite additional technical process to demonstrate an improvement in computer technology.
Similarly, Applicant’s step 2B argument would not be persuasive over reasons above as the step 2A prong 2 analysis is applicable in step 2B.
Examiner particular notes the cited example of how the invention improves technology is helpful in terms of illustrating the invention. However, as currently written, they’re not part of the claim and therefore the analysis needs to be performed with broader scope.
Regarding applicant’s argument directed to additional claim set, please refer to the response above.
Regarding Applicant’s argument directed to 103 rejection, the argument is moot in view of the amendment. Examiner notes that the priority date is given to 05/24/2016 as opposed to 09/18/2013.
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.
Claim 21 is 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.
As discussed above in relation to priority for claim 21, 0078 and 0086 of specification does not provide support for the claimed limitation. Particularly, the step of determining whether requirement is met occurs no later than step d of claim 12. This feature is first found on 01/27/2025’s preliminary amendment. As such, it is not part of original disclosure.
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 1-22 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) – (f), with the exception of raw data and the physical machines such as OCM, everything else recites an abstract idea. As noted above, the steps can be performed in human mind with physical aid in a manner similar to Rotman’s Fig. 3. Further, these steps describe 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.
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., … by 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. As of raw data, this is merely generally linking the abstract idea to hardware machinery. 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 12-22 can be similarly analyzed as claim 1-11 and would arrive at the same conclusion.
Examiner notes suggestions were made above in the response to argument. The above analysis is done based on the current breadth of the claimed scope. If the scope of claim is amended, the above analysis may need to be reevaluated, especially in step 2A prong 2.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 4-7, 9-10, 12, 15, 16, 18-20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Rotman (US 9142035)
As per claim 1, Rotman discloses a method, comprising:
a) determining a shipment batch comprising a set of objects (see Fig. 3, items A and B are determined)
b) determining a set of 3D geometries for the set of objects predicted from raw data sampled by an object characteristic measurer (OCM) (10: 30-49, re-measuring of item dimension item can be performed if necessary. Examiner notes multiple times of inaccuracy may need to occur (sampling). See Fig. 3 for 3D geometries being determined in table form)
c) determining a set of shipping material permutations for the shipment batch (Fig. 3 and see 3:49-65, size of packaging are to be packaged being determined)
d) determining a set of service level rate quotes for each of the set of shipping material permutations (see 3:66 – 4:8, recommendation can be based on customer experience or item restrictions on environment)
e) selecting a shipping material permutation from the set of shipping material permutations (see 3:66 – 4:8, recommendation can be based on customer experience or item restrictions on environment)
f) selecting the shipping material permutation based on a comparison of a dimension of the shipping materials within the selected shipping material permutation with the set of 3D geometries of the set of objects (see 3:66 – 4:8, recommendation can be based on customer experience or item restrictions on environment).
As per claim 4, Rotman 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 (Fig. 3)
As per claim 5, Rotman 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 (3:66-4:8)
As per claim 6, Rotman 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 (Fig. 3).
As per claim 7, Rotman 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 3D geometries for the set of objects to a set of object characteristic requirements for service levels provided by a set of shipping carriers (see Fig. 3 for comparing 3D geometries and 3:66-4:8 for factors affecting recommendation).
As per claim 9, Rotman 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 (3:66-4:8 and 14:35-54)
As per claim 10, Rotman 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 (Fig. 3, where each object is modeled separately and combined together in the box).
Claim 12 contains limitations substantially similar to claim 1 and would be rejected over similar rationale set forth above.
As per claim 15, Rotman 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 (3:66 -4:8).
As per claim 16, Rotman 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 (Fig. 3, box is big enough to fit both items)
As per claim 18, Rotman 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 (Fig. 3, both items A and B are classified for the particular order).
As per claim 19, Rotman 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 (Fig. 3, box is big enough to fit both items for the order)
As per claim 20, Rotman 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 (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.
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) 2, 3, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035) in view of Damji (US 20030200111)
As per claim 2, Rotman discloses the method of Claim 1, but does not explicitly disclose wherein the selected shipping material permutation comprises the shipping material permutation with a lowest service level rate quote.
Rotman, however, strongly suggest picking a lowest cost as it mansions comparing carrier shipping cost and identify avoidable shipping cost (14:35-54).
Damji teaches picking a lowest shipping cost among multiple options when deciding how to ship a package (0101-0102, least total cost being recommended).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Damji’s ranking of options based on cost with Rotman’s cost optimization for the purpose of saving on cost.
As per claim 3, Rotman discloses the method of Claim 1, but does not explicitly disclose wherein the selected shipping material permutation comprises the shipping material permutation with a shortest delivery speed.
Damji teaches determining shipping speed requirement and such speed can be next day (0012, 0101).
The rationale to combine would persist.
Claim 14 contains limitations substantially similar to claim 2 and would be rejected over similar rationale set forth above.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035)
As per claim 8, Rotman discloses the method of Claim 1, but does not explicitly disclose wherein the set of shipping material permutations comprise at least one permutation comprising a cardboard box. Rotman, however, teaches the package container is made from a stack of folded empty container and then formed into shipping box after being unfolded (see Fig. 2, item 206 where a stack is picked to form final box).
While Rotman doesn’t explicitly disclose such box being cardboard box, it is highly suggestive, especially with the stack and unfold functions, that such boxes are cardboard boxes. If not, it would have been obvious to apply cardboard boxes to packing station of Rotman as it is a material that is commonly used in the above fashion in a packing station.
Claim(s) 11, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035) in view of Streebin ‘343 (US 20150081343)
As per claim 11, Rotman does not explicitly disclose 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.
Streebin ‘343 teaches 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 (0011).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Streebin ‘343’s usage of API to determine quotes with Rotman’s shipping cost determination for the purpose of obtaining most up-to-date quotes from carrier directly.
As per claim 22, Rotman does not explicitly disclose the shipping automation system of Claim 12, wherein the processing system is further configured to print the shipping label.
Streebin ‘343 teaches print shipping label (0037)
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Streebin ‘343’s label printing to Rotman’s packing station for the purpose of enabling packed item to be shipped out.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035) in view of Garcia (US 20140300722)
As per claim 13, Rotman discloses the shipping automation system of Claim 12, but does not explicitly disclose wherein the object characteristic measurer comprises a personal user device. Garcia teaches using a personal device to measure dimension (0007)
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Garcia’s known use of personal device to Rotman’s packing station for the purpose of measuring item size.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035) in view of Black (US 20050222853)
As per claim 17, Rotman the shipping automation system of Claim 12, but does not explicitly disclose wherein the processing system is further configured to automatically generate customs forms for international shipments based on the customs information for the shipment batch.
Black teaches generating custom forms for international shipments based on the customs information for the shipment batch (0060-0061)
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Black’s custom form creation to Rotman’s packing station for the purpose of shipping item out quickly.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rotman (US 9142035) in view of Singh (US 20230162127)
As per claim 21, Rotman discloses the shipping automation system of claim 12 but does not disclose further comprising repeating g) – i) without the selected shipping material permutation when the dimensions of all object subset permutations fail the set of object dimension requirements for the selected shipping material permutation. However, Singh teaches that (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 Rotman’s shipping material selection for the purpose of reducing shipping cost (Singh: Fig. 3, step 4).
Double Patenting
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 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No.10489739 (‘739) in view of prior art cited for art rejection.
In this case, all the limitations contained in claim 1 can be found in claim 10 of ‘739. As per the dependent claims, it would have been obvious to combine the cited references noted above to claim 10 of ‘739 over similar rationale.
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 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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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628
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