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 .
This communication is a First Action Non-Final on the merits. Claims 1-20 as originally filed on February 23, 2025, are currently pending and have been considered below.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
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 limitations are:
Claim 1:
an object analyzer configured to analyze the one or more attributes of the object. . .
a fabrication subsystem, configured to generate fabrication files based on the analyzed attributes. . .
a packing list generator, configured to generate a customized packing list detailing assembly. . .
Claim 6:
a positioning platform hold and rotate the object in multiple orientations. . .
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.
The above listed claim limitations have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
A review of the specification shows that no corresponding structure is described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation (see 112(a) and 112(b) rejections below).
Since no corresponding structure has been outlined in the specification for the aforementioned limitations which invoke 35 U.S.C. 112(f), the following interpretations have hereby been given to these limitations:
The following terms have been interpreted as one or more computer processors:
an object analyzer, a fabrication subsystem, a packing list generator and a positioning platform
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
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 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As outlined above, each of claims 1-9 has at least one limitation which has been interpreted under 35 U.S.C. 112(f) in the form of “object analyzer, positioning platform and fabrication subsystem” which perform certain tasks. Neither the claims themselves nor the specification provides sufficient structure for any of these limitations which invoke 35 U.S.C. 112(f). While paragraphs [Object analyzer 0058-0060, Positioning Platform 0008, fabrication subsystem 0065-0066,] of the specification mention object analyzer, positioning platform and fabrication subsystem, they do not define any structural components which comprise the modules. Nor do they give a description of structural components which perform the tasks attributed to the various modules. Because neither the specification nor the claims themselves disclose corresponding structure for the material or act that performs the claimed function of the “object analyzer, positioning platform and fabrication subsystem” recited above, claims 1-9 are rejected under 35 U.S.C. 112(a). See MPEP 2181(IV)
Claims 1-9 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 pre-AIA the applicant regards as the invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) because they recite the aforementioned limitations which invoke 35 U.S.C. 112(f) and do not disclose corresponding structure which performs the recited functions. As outlined above with respect to the 35 U.S.C. 112(a) rejection of these claims, neither the claims themselves nor the specification describes such a structure. If there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See MPEP 2181(II). Thus, claims 1-9 are rejected under 35 U.S.C. 112(b) for railing to particularly point out and distinctly claim the subject matter which the inventor, joint inventor, or applicant regards as the 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites method for securing package of a product.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Regarding Claim 20 requires a computer readable storage medium, which stores a program. The specification does not set forth what constitutes the computer readable storage medium as being non-transitory, and therefore, in view of the ordinary and customary meaning of computer readable media and in accordance with the broadest reasonable interpretation of the claim, said device could be directed towards a transitory propagating signal per se and considered to be non-statutory subject matter. The claim states that these tangible devices are stored in a computer program product which can be interpreted as software, in that case hardware cannot be stored in software (program product). See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. 101, Aug 24, 2009, p. 2. Please refer to MPEP 2111.01 and the USPTO’s “Subject Matter Eligibility of Computer Readable Media” memorandum dated January 26, 2010, http://www.uspto.gov/patents/law/notices/101_crm_20100127.pdf.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites method for securing package of a product.
Step 2A – Prong 1
Independent Claims 1, 10 and 20 as a whole recite a method of organizing human activity. The limitations from exemplary Claim 1 reciting “object protection system, comprising: configured to scan a three-dimensional object and generate of the object; a feature configured to store one or more attributes of the object identified, the one or more attributes comprising packaging contact points; configured to analyze the one or more attributes of the object to determine one or more brace inserts and material requirements for packaging; configured to generate based on the analyzed attributes and communicate with to produce the one or more brace inserts; and configured to generate a customized packing list detailing assembly of the one or more brace inserts for packaging” is a method of managing interactions between people, which falls into the certain methods of organizing human activity grouping. The mere recitation of a generic computer (scanner, digital representation, database, object analyzer, fabrication subsystem, fabrication files, manufacturing system, packing list generator of claim 1; scanner, digital representation, fabrication files, manufacturing system of claim 10; computer readable storage medium, software, computer system, digital representation, scanner, fabrication files, manufacturing system of claim 20) does not take the claim out of the methods of organizing human activity grouping. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Claims 1-20 and their underlining limitations, steps, features and terms, are further inspected by the Examiner under the current examining guidelines, and found, both individually and as a whole, not to include additional elements that are sufficient to integrate the abstract idea into a practical application. The limitations are directed to limitations referenced in MPEP 2106.05 that are not enough to integrate the abstract idea into a practical application. Limitations that are not enough include, as a non-limiting or non-exclusive examples, such as: (i) adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions, (ii) insignificant extra solution activity, and/or (iii) generally linking the use of the judicial exception to a particular technological environment or field of use.
This judicial exception is not integrated into a practical application because the claim recites the additional elements of (scanner, digital representation, database, object analyzer, fabrication subsystem, fabrication files, manufacturing system, packing list generator of claim 1; scanner, digital representation, fabrication files, manufacturing system of claim 10; computer readable storage medium, software, computer system, digital representation, scanner, fabrication files, manufacturing system of claim 20). The scanner, digital representation, database, object analyzer, fabrication subsystem, fabrication files, manufacturing system, packing list generator of claim 1; scanner, digital representation, fabrication files, manufacturing system of claim 10; computer readable storage medium, software, computer system, digital representation, scanner, fabrication files, manufacturing system of claim 20, are recited at a high level of generality and are generically recited computer elements. The generically recited computer elements amount to simply implementing the abstract idea on a computer. The combination of these additional elements are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The claim do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Thus, even when viewed as an ordered combination, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea. The claims are ineligible.
Dependent claims 2-9 and 11-19 are also directed to same grouping of methods of organizing human activity. The additional elements of the scanner in claims 2, 11; digital representation in claims 4 and 14; database in claims 5, 12 and 15; object analyzer in claims 5 and 15; fabrication subsystem in claim 8; fabrication files in claims 8 and 17; manufacturing system in claims 8 and 17; Claims 2 and 11 present devices, image sensors, optical scanners, RF scanners, X-ray scanners, and thermal scanners; positioning platform in claims 6 and 16, are additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use. Accordingly, in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
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 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.
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.
(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.
Claims 1-20 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Colson et al (US Patent Application Publication No. 20220348363 - hereinafter Colson).
Re. claim 1, Colson teaches:
An object protection system, comprising:
a scanner configured to scan a three-dimensional object and generate a digital representation of the object; [Colson; ¶30 shows use of scanner].
a feature database configured to store one or more attributes of the object identified from the digital representation, the one or more attributes comprising packaging contact points; [Colson; ¶32].
an object analyzer configured to analyze the one or more attributes of the object to determine one or more brace inserts and material requirements for packaging; [Colson; ¶40 shows the analysis of the object to determine the packaging material for the object and material required such as bubble and web structures as it states “physics engine 140 may then identify (e.g., from a look up table or matrix) one or more packaging structures to use for the item based on the categorizations of “light weight” and “fragile.” The physics engine may further modify or customize the packaging structures based on, for example, the size, weight, or other characteristics of the item. For instance, the physics engine 140 may determine a packing structure or combination of packing structures (e.g., bubble and web structures in this example) to use to package an item based on its categorization (e.g., “light weight” and “fragile”). The physics engine 140 may then adjust the number of packing structures (e.g., number of bubbles and/or webs, in this example), size of packaging structures (e.g., width, height, thickness, diameter, etc.), quantity of material used to generate the packing structures (e.g., mass or volume), the material from which the packing structures are constructed (e.g., hard plastic, elastomer, metal, etc.), and/or other characteristics of the packing structures (e.g., corner rounding, gussets, fillets, etc.) according to the characteristics of the item”].
a fabrication subsystem configured to generate fabrication files based on the analyzed attributes and communicate with a manufacturing system to produce the one or more brace inserts; and [Colson; ¶33 shows communication with computing device with respect to the packaging system. ¶40 shows the creation of packaging rules that are utilized to determine how an item will be packaged as it states “instead of computing the forces to which the item is likely to be subjected, the physics engine 140 may categorize the item into one or more categories and may apply predetermined packaging rules, designs, or templates corresponding to the one or more categories”].
a packing list generator configured to generate a customized packing list detailing assembly of the one or more brace inserts for packaging. [Colson; ¶40 details what will be required to provide protection for the item to be shipped].
Re. claim 2, Colson further discloses:
wherein the scanner comprises one or more devices selected from image sensors optical scanners, RF scanners, X-ray scanners, and thermal scanners. [Colson; ¶26 shows an optical scanner].
Re. claim 3, Colson further discloses:
wherein the one or more attributes of the object further comprise at least one of dimensions weight distribution, surface fragility, points of stability, and areas unsuitable for packaging contact. [Colson; ¶37-¶38 shows an attribute such as weight and geometry of product, also shows surface finish and fragility/durability].
Re. claim 4, Colson further discloses:
wherein the one or more attributes are identified by processing the digital representation of the object, the processing configured to analyze surface topology, material density, and structural balance of the object based on the digital representation. [Colson; ¶37-¶38].
Re. claim 5, Colson further discloses:
wherein the object analyzer comprises an object database configured to store pre-determined data on material properties, such as impact resistance and vibration sensitivity, to determine the selection of brace insert types and materials. [Colson; ¶37-¶38 and ¶40 shows determination of impact and vibration for shipping purposes]
Re. claim 6, Colson further discloses:
further comprises a positioning platform configured to hold and rotate the object in multiple orientations during the scanning process for scanning coverage of all surfaces of the object. [Colson; ¶35 and ¶95 shows moving item to scanning area and rotating the item].
Re. claim 7, Colson further discloses:
wherein the customized packing list comprises step-by-step assembly instructions for the one or more brace inserts, each instruction specifying a designated placement and orientation of the brace inserts relative to the identified packaging contact points. [Colson; ¶40 shows the creation of packaging rules that are utilized to determine how an item will be packaged as it states “physics engine 140 may categorize the item into one or more categories and may apply predetermined packaging rules, designs, or templates corresponding to the one or more categories. For instance, if the item has a density less than a certain threshold the physics engine 140 may categorize the item as being a “light weight” item. The physics engine 140 may further categorize the item as being a “fragile” item if, for example, it has relatively thin spans of material, is made of a brittle or low strength material, or is for other reasons susceptible to damage. The physics engine 140 may then identify (e.g., from a look up table or matrix) one or more packaging structures to use for the item based on the categorizations of “light weight” and “fragile.” The physics engine may further modify or customize the packaging structures based on, for example, the size, weight, or other characteristics of the item. For instance, the physics engine 140 may determine a packing structure or combination of packing structures (e.g., bubble and web structures in this example) to use to package an item based on its categorization (e.g., “light weight” and “fragile”). The physics engine 140 may then adjust the number of packing structures (e.g., number of bubbles and/or webs, in this example), size of packaging structures (e.g., width, height, thickness, diameter, etc.), quantity of material used to generate the packing structures (e.g., mass or volume), the material from which the packing structures are constructed (e.g., hard plastic, elastomer, metal, etc.), and/or other characteristics of the packing structures (e.g., corner rounding, gussets, fillets, etc.) according to the characteristics of the item”].
Re. claim 8, Colson further discloses:
wherein the fabrication subsystem is configured to generate fabrication files by processing the one or more attributes and the material requirements, the fabrication files comprising one or more instructions for the manufacturing system for producing customized brace inserts and other packaging supports. [Colson; ¶40].
Re. claim 9, Colson further discloses:
wherein the one or more brace inserts and the material used for packaging provide structural protection to the object during shipping and are customized based on the object's unique attributes. [Colson; ¶40].
Re. claim 10,
Method of claim 10 substantially mirrors the system of claim 1.
Re. claim 11,
Method of claim 11 substantially mirrors the system of claim 2.
Re. claim 12, Anderson in view of Colson teaches method of claim 10.
further comprises storing the identified one or more attributes in a feature database. [Colson; ¶32].
Re. claim 13,
Method of claim 13 substantially mirrors the system of claim 3.
Re. claim 14,
Method of claim 14 substantially mirrors the system of claim 4.
Re. claim 15,
Method of claim 15 substantially mirrors the system of claim 5.
Re. claim 16,
Method of claim 16 substantially mirrors the system of claim 6.
Re. claim 17,
Method of claim 17 substantially mirrors the system of claim 7.
Re. claim 18,
Method of claim 18 substantially mirrors the system of claim 8.
Re. claim 19,
Method of claim 19 substantially mirrors the system of claim 9.
Re. claim 20,
Medium of claim 20 substantially mirrors the system of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM EL-BATHY whose telephone number is (571)272-7545. The examiner can normally be reached Monday - Friday 9am - 7pm.
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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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/IBRAHIM N EL-BATHY/Primary Examiner, Art Unit 3628