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 .
Status of Claims
This action is in reply to the preliminary amendment filed on 4/23/2025.
Claims 1-12 and 14-15 have been amended and are hereby entered.
Claim 20 has been canceled.
Claims 1-19 are currently pending and have been examined.
Information Disclosure Statement
All references listed in the IDS filed on 4/23/2025 have been considered. Examiner notes for clarity that said IDS does not meet the requirements of 37 CFR 1.98 for consideration of reference JP 2872965 (e.g., no copy/translation under 1.98(a) nor proper identification of Parent Application 18167592 under 1.98(d)(1)). Nonetheless, as the IDS filed on 4/02/2025 for Parent Application 18167592 provided a proper original copy and translation for this reference, Examiner has chosen to consider it.
Claim Objections
Claim 10 is objected to because of the following informalities:
In Claim 10, “a first plurality of actuatable linking pins…” should read “a first plurality of the actuatable linking pins…” or similar; and
In Claim 10, “a second plurality of actuatable linking pins…” should read “a second plurality of the actuatable linking pins…” or similar.
Appropriate correction is required.
Claim Rejections – 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 contains the following limitation: “a computing device connected to the plurality of sets of single vane rotary actuators and to the plurality actuatable linking pins, wherein the computing device is configured to receive a request to form a package container and generate a set of command signals to actuate a portion of the sets of single vane rotary actuators to form the package container and actuate a portion of the plurality of actuatable linking pins to form a front door of the package container.” This language is indefinite in multiple ways. Firstly, it is unclear as drafted whether “a computing device,” “the request to form a package container” received thereon, and the function of “generate a set of command signals used to actuate…” effectuated thereon, are intended to be the same as or different from the “computing device,” “receiving, by a computing device including…, a request to form the package container…,” and “generating, by the computing device, a set of command signals which actuate…” of Claim 16 (upon which Claim 1 depends) respectively. Secondly and relatedly, it is unclear if the term “a package container” in this language of Claim 1 is intended to be the same as or different from the “package container” of Claim 16 (upon which Claim 1 depends). For the purposes of this examination, each of these features and functions will be interpreted as relating back to corresponding features and functions of Claim 16. Claims 2-15 are rejected due to their dependence upon Claim 1.
Claims 12-14 each contain variations of receiving “a package dimension” or “package dimensions.” It is unclear as drafted whether these variations are intended to relate back to/further limit the limitation “receiving, by a computing device…, a request to form the package container, the request including a package dimension” of Claim 16 (upon which each of these claims eventually depend) or whether these are intended to recite separate steps. This indefiniteness is compounded by the use of the term “a package container” rather than “the package container.” For the purposes of this examination, these variations are interpreted as relating back to (and further limiting where applicable) the above-quoted limitation of Claim 16.
Claims 12-15 each contain references to “a non-transitory computer readable medium, having instructions stored therein that, when executed by one or more processors, cause the one or more processors to…” In addition, Claims 12-14 each claims these instructions to cause variations of determining “a package container size;” and Claim 15 claims these instructions to cause “determine a pattern of front plates…” It is unclear as drafted whether these instances of a non-transitory computer readable medium and the processor-executable instructions thereof are intended to relate back to the similarly claimed non-transitory computer readable medium and processor-executable instructions thereof of Claim 16 (upon which each of these claims eventually depend). Relatedly, it is unclear as drafted whether the above-referenced functions effectuated by these instructions are intended to relate back to similarly drafted limitations of Claim 16 (upon which each of these claims eventually depend). For the purposes of this examination, the non-transitory computer readable medium, instructions, and one or more processors of these claims will be interpreted as relating back to respective elements of Claim 16. Additionally for the purposes of this examination, the above-referenced functions executed based on these instructions are interpreted as relating back to corresponding functions of Claim 16.
The preamble of Claim 13 reads “[t]he intelligent parcel locker of claim 1,” yet Claim 1 is not directed to the statutory category of a machine (ie: an intelligent parcel locker) but rather a method/process. As such, the statutory category of Claim 13 is rendered unclear. For the purposes of this examination, “[t]he intelligent parcel locker of claim 1” will be interpreted as “[t]he method of claim 1.”
Claims 4, 6, 7, 8, 9, 12, 13 (as per the separate 112(b) interpretation above), and 14 are each explicitly recited as method claims, yet all claim “further comprising” a set of structural elements. Methods are made up of steps, not such structural elements (though such steps may be claimed as being effectuated on/via structural elements). As such, these limitations create impermissible hybrid claims, rendering it unclear what effect these structural elements have upon the scope of the claims as drafted, or even whether these structural elements limit the claimed methods at all. For the purposes of this examination, “further comprising” in each of the above claims will be interpreted as “wherein the intelligent parcel locker further comprises.” Claims 5-11 are rejected due to their respective dependence upon one or more of the above-listed claims.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12324534 in view of Pointeau (PGPub 20190231105) (hereafter, “Pointeau”) and Walsh et al (PGPub 20250091728, claiming the benefit of PCT/US2023/067490 and Provisional 63346464) (hereafter, “Walsh”). Claim 1 of the present application differs from Claim 1 of U.S. Patent No. 12324534 in that it is a dependent claim of (and thus incorporates the limitations of) Claim 16 of the instant application; however, it would be obvious to modify Claim 1 to incorporate the limitations of Claim 16 as disclosed by way of combining U.S. Patent No. 12324534 with Pointeau and Walsh as set forth in the 103 rejection below.
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include the modifiable package locker structure and techniques of Pointeau with the modifiable package locker system of U.S. Patent No. 12324534 because the combination merely applies a known technique to a known device/method/product ready for improvement to yield predictable results (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-421 (2007) and MPEP 2143). The known techniques of Pointeau are applicable to the base device (U.S. Patent No. 12324534), the technical ability existed to improve the base device in the same way, and the results of the combination are predictable because the function of each piece (as well as the problems in the art which they address) are unchanged when combined. It would further have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include the package locker-based single vane rotary actuators of Walsh with the modifiable package locker system of U.S. Patent No. 12324534 because the combination merely simple substitution of one known element for another to obtain predictable results (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-421 (2007) and MPEP 2143). The actuators of Walsh are applicable to the base device (U.S. Patent No. 12324534), the technical ability existed to improve the base device in the same way, and the results of the combination are predictable because the function of each piece (as well as the problems in the art which they address) are unchanged when combined.
Claims 2-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 2-15 respectively of U.S. Patent No. 12324534 in view of Pointeau in view of Walsh. Claims 2-15 of the present application differ from Claims 2-15 respectively of U.S. Patent No. 12324534 in that they are dependent claims of (and thus incorporate the limitations of) Claim 16 of the instant application; however, it would be obvious to modify Claims 2-15 to incorporate the limitations of Claim 16 as disclosed by way of combining U.S. Patent No. 12324534 with Pointeau and Walsh as set forth in the 103 rejection below.
The rationale to combine remains the same as for Claim 1 above.
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 16 is rejected under 35 U.S.C. 103 as being unpatentable over Pointeau (PGPub 20190231105) (hereafter, “Pointeau”) in view of Walsh et al (PGPub 20250091728, claiming the benefit of PCT/US2023/067490 and Provisional 63346464) (hereafter, “Walsh”).
Regarding Claim 16, Pointeau discloses:
A method for forming a package container in an intelligent parcel locker (Abstract; ¶ 0004, 0042-0043; Figs. 2-5; an electronic parcel locker comprising an internal structure for supporting parcels deposited in the electronic parcel locker, the internal structure being constituted of an array of bars, where the bars of the array of bars corresponding to shapes of parcels to be deposited in said electronic parcel locker are retractable towards the back panel for defining temporary compartments exactly adapted to shapes of the parcels);
receiving, by a computing device including a non-transitory computer readable medium having instructions stored therein and one or more processors configured to execute the instructions, a request to form the package container, the request including a package dimension (¶ 0042, 0049, 0058, 0061; Figs. 2, 6, 8; the APL is controlled by a controller preferably integrated in the APL structure; the control system includes, e.g., a controller (processor unit), ne or more memory storage components such as RAM, ROM, flash RAM, hard drive, flash drive, or the like, etc.; the memory storage comprises a main memory into which an operating system and application programs and software modules are loaded such as algorithms for optimizing the control of actuators of the bars or actuators of the two doors of the APL; the memory storage can contain, among other codes, software which controls basic hardware operation of the system, such as interactions with peripheral components and for example for controlling actuators of the APL; in a preferred embodiment, dimensions of the parcels for deposit and associated recipient identifications are provided to the APL for all the parcels to be deposited, for example by using a RFID reader able to read as a group RFID tags of all the parcels brought for deposit by a carrier agent or by receiving them from a mobile device of the carrier agent (act 716); in act 720, when the carrier agent takes a parcel for depositing it in the APL, an identification of the parcel is transmitted to the APL; this parcel identification, depending on the invention embodiment, can be printed on a shipping label of the parcel in the form of a barcode and captured by a barcode reader or can be comprised in a RFID tag affixed onto the parcel and read by a RFID reader connected with the APL or can be captured by a mobile device of the carrier agent and transmitted from the mobile device to the APL);
determining, by the computing device, a package container size based on the package dimension (¶ 0049, 0058, 0061-0062; Figs. 3, 6, 8; communicating for example with a remote server system storing shipment information related to parcels such as parcel identifications or parcel dimensions or recipient information; based on the dimensions of the parcel, the controller identifies an optimized location in the APL and selects the bars corresponding to the optimized location; the APL automatically adjusts the size of the temporary compartment according to the shape of the parcel to be deposited); and
determining, by the computing device, a location in the intelligent parcel locker to create the package container (¶ 0043, 0058, 0061; Figs. 3, 6, 8; based on the dimensions of the parcels for deposit and the associated recipient identifications, the control unit defines the parcels consolidations, which have to take place, identifies in which areas of the APL these consolidations can take place, and plans for parcel consolidations and deposits; in order to minimize the carrier agent travel for the deposit, the areas involved in the deposit are concentrated in a spatially minimized zone of the APL).
Pointeau additionally discloses determining, by the computing device, a pattern of front plates and a plurality of sets of actuators which generate the package container (¶ 0043, 0049, 0062; Figs. 3, 6, 8; each actuator causes a horizontal movement or an actively holding of a position of a corresponding bar under control of the processor; based on the dimensions of the parcel and on the optimized zoning and on the parcel deposit/collection plan, the controller identifies an optimized location in the APL and selects the bars corresponding to this optimized location). Pointeau does not explicitly disclose but Walsh does disclose wherein the actuators are single vane rotary actuators (¶ 0093-0095; in some embodiments, each package locker has its own air control value; in some embodiments, values have four input ports arranged around a circular valve body, and a servo motor capable of turning an internal vane in the orientation needed).
Pointeau additionally discloses generating, by the computing device, a set of command signals which actuate the plurality of sets of actuators to form the package container (¶ 0043, 0058, 0062-0063; Figs. 3, 6, 8; the controller commands the corresponding actuators to retract in retractable positions according to the length of the parcel; the APL automatically adjusts the size of the temporary compartment according to the shape of the parcel to be deposited; preferably, the bar rows delimiting the temporary compartment are actively held in their extended position and serve as a guide for the carrier agent for the parcel deposit (act 724)). Pointeau does not explicitly disclose but Walsh does disclose wherein the actuators are single vane rotary actuators (¶ 0093-0095; in some embodiments, each package locker has its own air control value; in some embodiments, values have four input ports arranged around a circular valve body, and a servo motor capable of turning an internal vane in the orientation needed).
It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to include the package locker-based single vane rotary actuators of Walsh with the modifiable package locker system of Pointeau because the combination merely simple substitution of one known element for another to obtain predictable results (see KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-421 (2007) and MPEP 2143). The actuators of Walsh are applicable to the base device (Pointeau), the technical ability existed to improve the base device in the same way, and the results of the combination are predictable because the function of each piece (as well as the problems in the art which they address) are unchanged when combined.
Novel/Non-Obvious Subject Matter
Claims 1-15 contain novel and non-obvious subject matter as explained in the Notice of Allowance dated 4/22/2025 for Parent Application 18167592. Claim 17 contains novel and non-obvious subject matter by way of claiming the same novel and non-obvious elements of Claim 1 specifically identified as novel and non-obvious in said Notice of Allowance. Claims 18-19 contain novel and non-obvious subject matter due to their dependence upon Claim 17.
Discussion of Prior Art Cited but Not Applied
For additional information on the state of the art regarding the claims of the present application, please see the following documents not applied in this Office Action (all of which are prior art to the present application):
PGPub 20200128992 – “Automated Delivery Locker and Assemblies,” Mountford et al, disclosing a package locker, optionally contained within a delivery vehicle, with self-adjusting elements configured to adjust the internal storage compartments of the locker to correspond to the size and shape of particular packages
PGPub 20150058163 – “Standardized Shipping,” Lenahan et al, disclosing shipping techniques for use with package lockers capable having their locker space resized in order to fit particular packages
PGPub 20130264381 – “Unmanned Parcel Storage Apparatus Capable of Dynamically Allocating Storage Space and Method of Using the Same,” Kim et al, disclosing a storage locker capable of adding or removing partitions to create the desired storage space to receive a parcel of a designated size
US 10053288 – “Pickup Locations with Modifiable Storage Compartment Configurations and Corresponding Door Operations,” Rawal, disclosing package lockers which determine dimensions of packages to be received and modify compartment configurations (e.g., by dividing larger storage compartments into multiple smaller storage compartments, or vice versa) to accommodate the receipt of said packages
US 11868954 – “Interactive System for Facilitating Purchases and Returns,” Singh et al, disclosing package lockers with adjustable partitions such that packages of different sizes may be accommodated
Ooi et al, Smart Modular Parcel Locker System using Internet of Things (IoT), 2021 IEEE 11th International Conference on System Engineering and Technology (ICSET), pgs. 66-71, disclosing systems and methods for parcel dimension determination and associated parcel locker location assignments
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK C CLARE whose telephone number is (571)272-8748. The examiner can normally be reached Monday-Friday 6:30am-2:30pm EST.
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/MARK C CLARE/Examiner, Art Unit 3628
/MICHAEL P HARRINGTON/Primary Examiner, Art Unit 3628
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