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 amendment filed on 03/18/2026.
Claims 1-5, 8-12 are pending.
Response to Argument
Regarding Applicant’s argument directed to 101 rejection, the arguments directed to claims 1-4, 11-12 are not persuasive.
Applicant argues that the invention solves a shortcoming of a computerized system because locker system is improved by allowing delivery of parcel via fallback delivery instruction.
Examiner respectfully disagree the improvement is an improvement in technology. Instead, this an improvement to the abstract idea itself (forming a business relationship). As shown in 0038-0039’s Table 2, the improvement can be an instruction presented in table form (or a series of rules). This is following rules or steps that can be performed in mental mind with help of physical aid to write down table 2, which is part of the abstract idea. Therefore, the improvement is only on the abstract idea itself and not the underlying technology. As such, Applicant’s argument is not persuasive.
Applicant’s argument directed to claim 5 is persuasive. Relevant 101 rejection is withdrawn.
Regarding Applicant’s argument directed to 103 rejections, the argument is persuasive with regards to claims 1-4, 11-12 but are moot for claims 5, 8-10.
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 1-4, 11-12 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, with the exception of lockers and physical parcels, and the machine-readable code, everything in the body recites an abstract idea. In this case, these describes a series of rules to be followed to determine a fallback delivery instruction. This is both following rules and a business relationship, which falls into certain methods of organizing human activities. In addition, these are also mental process where one can completely perform in human mind via collecting information, analyzing them and making determination to provide result. Therefore, claim 1 also falls into mental processes. In any case, claim 1 recites an abstract idea.
Step 2A prong 2
As noted above, the additional elements are lockers, the parcel, and the machine-readable code. As per the parcel and lockers are merely the subject of the delivery instruction, they’re only tangentially related to the abstract idea and are merely used to describe the operating environment for the abstract idea. As per the machine-readable code, it’s also similarly used to describe the operating environment for part of the abstract idea, namely the information medium. Even viewed in an ordered combination, these additional elements are still nothing more than merely generally linking the abstract idea to a particular field of use. Therefore, whether viewed individually or as an ordered combination, the additional elements do not integrate the abstract idea into practical application. Therefore, claim 1 is directed to an abstract idea.
Step 2B
As discussed above in step 2A prong 2, of which the analysis is still applicable in step 2B, the additional elements are merely generally linking the abstract idea into a particular field of use, whether viewed individually
Claims 2-4, 11-12 merely further limit the abstract idea by introducing more steps to be followed and introducing other additional element that’s still generally linking the abstract idea to those field of use. They would not be eligible over similar rationale analyzed above.
Examiner recommends potentially incorporating features similar to claim 5 by further limiting the fallback delivery option to beyond mere instructions that can be part of the recited abstract idea.
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) 5, 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Robinson (US 20200219057) in view of Heinlein (DE 10246650), further in view of Schwartz (US 20210253015).
Please note, while specification describes exact match and closest match using examples that are mutually exclusive (i.e., a closest match is used when exact match is not found), specification never defines closest match and exact match being mutually exclusive. Examiner is only able to find exact match and closest match being mutually exclusive when referring to spreadsheet function (e.g., excel formulas), which is different from the context used here. Therefore, one ordinary skilled in the art would understand that an exact match can be a closest match. If Applicant disagree with this interpretation, examiner recommends either 1) introduce exact match into claim and provide context so that it distinguishes from a closest match, or 2) further limit the meaning of closest match so it’s distinct from an exact match.
As per claim 5, Robinson discloses a method, performed by a computerized controller in a computerized automated parcel locker system serving a location having multiple recipients, the parcel locker system comprising a plurality of lockers, each having an associated door and an associated sensor, the method comprising:
obtaining a package
obtaining a list of the recipients served by the parcel locker system (see 0086, Fig., 5, step 520. Examiner notes the first parcel is on the list but not currently on a set of parcels already stored in the locker bank);
for each parcel in the plurality of parcels, processing the each parcel by:
comparing an intended recipient of the each parcel to the list of recipients served by the parcel locker system to identify a closest match of the intended recipient to a recipient served by the parcel locker system (see 0086, Fig., 5, step 520. Examiner notes the first parcel is on the list but not currently on a set of parcels already stored in the locker bank);
responsive to finding an exact match of the intended recipient on the list of recipients, assigning the each parcel to a locker of the plurality of lockers (0086-0087, noting association may be based on having the same consignee);
adding the each parcel to a list of deliverable parcels with an indication of the closest match (0097, Examiner notes that the same consignee would be a closest match)
identifying a selected locker of the plurality of lockers as being capable of holding the deliverable parcel (0097);
reserving the selected locker for delivery of the deliverable parcel (0097);
opening the selected locker (0097); and
subsequent to the selected locker being closed, notifying the intended recipient of a delivery of the each parcel (0097, 0128).
Robinson does not but Heinlein teaches using a package manifest linked to a plurality of packages (para 6 of page 5, B. by weekly delivery. Here, for example, the Hermes shipping department is addressed, which routinely supplies customers with location and street information on certain days. This is also possible with the locker systems according to the invention. He not only receives the individually labeled parcels from the mail order business, but also a parcel list that shows how many parcels are to be deposited in the relevant locker system at the relevant location. It goes without saying It goes without saying that only as many packages can be delivered to individual addressees as there are lockers. The system can then be programmed in such a way that not only the individual parcels are entered with the scanner, but first the deliverer is asked in advance to scan the parcel list in accordance with method step m) specified in claim 2. The computer then registers that, for example, five packages are to be delivered. After that, the depositing takes place in individual steps in the same steps as described above. At the same time, the computer also compares how many subjects have actually been occupied with the individual data and the package list, so that there is also a control option to determine that all five packages have actually been delivered and deposited. The parcel list can the deliverer in the form of a paper-written list, for. B. barcode list.).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Heinlein’s list of parcels with Robinson’s method of consolidating parcels with common consignee into the same locker for the purpose of initiating consolidation for a group of parcels.
Robinson also does not explicitly discloses
subsequent to processing all parcels in the plurality of parcels, for each deliverable parcel on the list of deliverable parcels:
In other words, Robinson, while discloses locating a locker capable of storing each parcel, reserving the locker, opens the locker and subsequent to closing of the locker, notify recipient, does not disclose performing the locker assignment in a batch operation where assigning is performed only after all the parcels have been processed.
Schwartz describes that for planning usage allocation for a limited amount of space, such planning is performed in a batch mode where location is assigned after all items to be allocated among the limited amount of space is known (0082 controller identifies items are to be loaded on a particular vehicle and determine in advance of proposed shelf location, which will be stored as a loading plan. See also 0108 that items table containing entries of items is sent to controller to assign potential shelf positions). Schwartz, also describes that lockers and shelf can be obvious variations to store items (0119 regarding lockers or shelved storage locations being used to store missed delivered parcels).
Therefore, it would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to combine Schwartz’ batch processing technique for allocating limited amount of space with Robinson’s method of processing parcels to be delivered for the purpose of making plans in advance.
As per claim 8, Robinson further discloses the method of claim 5, wherein the package manifest comprises delivery information for one or more other parcels not included in the plurality of parcels (0086-0087, Examiner notes parcel already in the locker would contain same consignee, which is delivery information of first parcel).
As per claim 9, Robinson further discloses the method of claim 5, wherein the package manifest is obtained by scanning a machine readable code (0084).
As per claim 10, Robinson further discloses the method of claim 5, wherein obtaining the list of recipients served by the parcel locker system comprises receiving the list of recipients from a property management system (0082-0083).
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 1-5, 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6, 7 of U.S. Patent No. 12243003. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitations discussed in claims 1-5, 8-12 are discussed in claims 1, 2, 6, 7 of 12243003. Therefore, the claims in the reference application anticipates claims 1-5, 8-12.
Allowable Subject Matter
In view of Applicant’s argument presented on page 7 of remarks filed on 03/18/2026, claims 1-4, 11-12 would be allowable if the above 101 and double patenting rejection is overcome.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at 571-272-5587. 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
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