DETAILED ACTION
Notice of 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 the Application
Claims 1-20 have been examined in this application. This communication is the first action on the merits.
Priority
This application is a continuation of US non-provisional application no. 18/345,969, filed on June 30, 2023, which claims priority to U.S. Provisional Application No. 63/357,452, filed on June 30, 2022, and U.S. Provisional Application No. 63/357,444, filed on June 30, 2022.
Information Disclosure Statement
The Information Disclosure Statements filed 5/8/2025 through 2/23/2026 have been considered.
Claim Objection – Warning
Applicant is advised that should claim 3 be found allowable, claim 14 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof (while claim 3 recites “the vehicle” and claim 14 recites “the transporter,” claim 1 makes clear that the transporter and the vehicle refer to the same thing). When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Similarly, Applicant is advised that should claim 9 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Both claims 9 and 10 recite identical subject matter.
Claim Objections
Claims 1, 5, 15 and 16 are objected to because of the following informalities:
Claims 1, 15, and 16 initially recite “one or more other service providers” but then refer to “a service provider.” While the examiner is able to ascertain the scope of the claims such that they are not indefinite, clarity could be improved by using different terminology to refer to the service providers (e.g. one or more first service providers, and a second service provider). In addition, because the claim subsequently refers to “a service provider” after introducing the one or more other service providers – “a service provider” under the broadest reasonable interpretation could be understood to include any service provider.
Claim 5 recites “the same condition,” which lacks antecedent basis, which does not render claim 5 indefinite itself, but should be amended to recite “a same condition” to improve clarity. Also see the related § 112(b) rejection of claim 5 below.
Claim 16 recites, at the bottom of the claim “and the transporter.” In view of the other independent claims, it appears this may be a typo that was not intended to be included in claim 16, and the claim should have ended after “wherein the transporter is a vehicle.”
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 5 and 20 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.
Claim 5 recites “wherein the transporter or an entity that operates the server computer is not responsible for damage to the item if the item is delivered to the service provider in the same condition as in the picture of the item” – however, “the picture of the item” lacks sufficient antecedent basis in the claims, and it is therefore unclear what “the picture of the item” is referring to, or whether the claims were intended to include a previous limitation discussing a picture of the item.
For the purposes of further examination, the examiner interprets “the picture of the item” to read as “a picture of the item.”
Claim 20 recites “wherein the service providers are restaurants” – however, the limitation “the service providers” renders claim 20 indefinite because it is unclear whether “the service providers” refers to, in claim 16, i) the recited “one or more other service providers”, ii) the recited “a service provider,” or iii) both i and ii.
See Ex Parte Miyazaki, 89 USPQ2d 1207, 1211, (Bd. Pat. App. & Int. 2008), holding “if a claim is amenable to two or more plausible claim constructions” the claim may be rejected as indefinite during prosecution. For the purposes of further examination, the examiner interprets the service providers to refer to any of the service providers recited in claim 16.
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 1-2 and 6-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6-9 and 12-18 of U.S. Patent No. 12327217 (US12327217B2). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1: All of the limitations of instant claim 1 are anticipated by claim 1 of the ‘217 patent.
Claim 2: The further limitations of instant claim 2 are anticipated by claim 2 of the ‘217 patent.
Claim 6: The limitations of instant claim 6 are anticipated by claim 6 of the ‘217 patent.
Claim 7: The limitations of instant claim 7 are anticipated by claim 7 of the ‘217 patent.
Claim 8: The limitations of instant claim 8 are anticipated by claim 13 of the ‘217 patent.
Claim 9: The limitations of instant claim 9 are anticipated by claim 14 of the ‘217 patent.
Claim 10: The limitations of instant claim 10 are anticipated by claim 14 of the ‘217 patent (claim 10 is a duplicate of claim 9).
Claim 11: The limitations of instant claim 11 are anticipated by claim 15 of the ‘217 patent.
Claim 12: The limitations of instant claim 12 are anticipated by claim 8 of the ‘217 patent.
Claim 13: The limitations of instant claim 13 are anticipated by claim 9 of the ‘217 patent.
Claim 14: The limitations of instant claim 14 are anticipated by claim 16 of the ‘217 patent.
Claim 15: The limitations of instant claim 15 are anticipated by claim 12 of the ‘217 patent.
Claim 16: The limitations of instant claim 16 are anticipated by claim 12 of the ‘217 patent.
Claim 17: The limitations of instant claim 17 are anticipated by claim 17 of the ‘217 patent.
Claim 18: The limitations of instant claim 18 are anticipated by claim 18 of the ‘217 patent.
Claim 19: The limitations of instant claim 19 are anticipated by claim 12 of the ‘217 patent.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 16 of U.S. Patent No. 12327217 (US12327217B2). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 3: As above, instant claim 2 is anticipated by claim 2 of the ‘217 patent. The limitations of instant claim 3 are taught by claim 2 of the ‘217 patent (which teaches instant claim 2) in view of claim 16 of the ‘217 patent (which teaches the transporter being a car as in instant claim 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the transporter/vehicle being a car as taught by claim 16 of the ‘217 patent in the method of claim 2 of the ‘217 patent, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4, and 16 of U.S. Patent No. 12327217 (US12327217B2). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 4: As above, instant claim 3 is taught by claims 2/16 of the ‘217 patent. The further limitations of instant claim 4 are taught by claims 2/16 of the ‘217 patent (which teach instant claim 3) in view of claim 4 of the ‘217 patent (which teaches the further limitations of instant claim 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the item being in a sealed box as taught by claim 4 of the ‘217 patent in the method of claims 2/16 of the ‘217 patent, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 4-5, and 16 of U.S. Patent No. 12327217 (US12327217B2). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 5: As above, instant claim 4 is taught by claims 2/16/4 of the ‘217 patent., and the additional limitations of instant claim 5 are taught by claim 5 of the ‘217 patent. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the features taught by claim 5 of the ‘217 patent in the method of claims 2/16/4 of the ‘217 patent, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. in view of US 20200279209 A1 to Di Benedetto et al. (Di Benedetto).
Claim 20: The limitations of instant claim 16 are anticipated by claim 12 of the ‘217 patent as per above. The further limitations of instant claim 20 (“wherein the servicer providers are restaurants”) is not taught by the claims of the ‘217 patent, however, Di Benedetto teaches restaurants being service providers from which a customer orders delivery of a food product from (Di Benedetto: ¶ 0003-0004, ¶ 0022-0024, ¶ 0024 showing “at least one food or beverage delivery service is linked to each common restaurant and its source menu items…”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the service providers bring restaurants from which a customer orders a food delivery item as taught by Di Benedetto in the system of claim 12 of the ‘217 patent, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
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 a judicial exception (i.e. an abstract idea) without significantly more.
Step 1:
Claims 1-14 recite “A method…” (i.e. a process); claim 15 recites “A server computer comprising: a processor; and non-transitory computer readable medium…” (i.e. a machine); and claims 16-20 recite “A system comprising: a server computer comprising, a processor, and a non-transitory computer-readable medium…” (i.e. a machine). These claims fall under one of the four categories of statutory subject matter and as a result, pass Step 1 of the subject matter eligibility test.
However, “Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 U.S.C. 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not end the eligibility analysis, because claims directed to nothing more than abstract ideas (such as a mathematical formula or equation), natural phenomena, and laws of nature are not eligible for patent protection.” See MPEP 2106.04. Accordingly, the examiner continues the subject matter eligibility analysis below.
Step 2A Prong One:
Independent claim 1, 15, and 16 (using claim 1 as representative) recite limitations for:
receiving…a fulfillment request message from an end user to deliver one or more food items from one or more other service providers to the end user;
receiving…a request from the end user of an item to deliver the item to a service provider, wherein the item is a non-perishable item; and
providing…a retrieval message comprising an instruction to a transporter which causes the transporter to travel to the end user to deliver the one or more food items from the one or more other service providers and retrieve the non-perishable item from the end user after delivering the one or more food items to the end user by
routing the transporter to the one or more other service providers, and then to a location of the end user, and then to the service provider
The limitations of independent claims 1, 15, and 16 above are determined to recite an abstract idea (i.e. receiving requests to deliver food items and transport a return item to a service provider, and managing and routing a transporter based on the requests) for the reasons discussed in the following continued Step 2A Prong One analysis. Note that “An abstract idea can generally be described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016).
As per MPEP 2106.04(a)(2)(II), claim limitations which recite commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations) or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) fall into the “certain methods of organizing human activity” category of judicial exceptions. Therefore, since the processes described by the limitations above amount to a commercial interaction (i.e. receiving requests to deliver food items and transport a return item to a service provider, and managing and routing a transporter based on the requests – which describes commercial interactions pertaining to transporting items, and is a commercial process that describes business relations) and managing interactions between people (i.e. managing transport requests between a user and a transporter, and providing rules or instructions for a transporter/vehicle to follow pertaining to the transport requests), the claims fall into the “certain methods of organizing human activity” grouping of abstract ideas. Note that as per MPEP 2106.04(a)(2)(II), “[T]he sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the ‘certain methods of organizing human activity’ grouping.”
As described in MPEP 2106.04(a)(2)(III), “[T]he "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.” and “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.” The limitations recited by the representative independent claims 1, 15, and 16 above, under the broadest reasonable interpretation and but for the use of generic computer components, cover concepts (e.g. observation, evaluation, judgment, and opinion) that can reasonably be performed in the human mind or by the human mind with the aid of simple tools such as pen and paper. For example, the “receiving…” and “receiving…” steps above amount to observations, while the “providing…a retrieval message…” and “routing the transporter…” steps above would be considered evaluations, judgments, and opinions that can be carried out via the human mind with the aid of simple tools such as pen and paper (e.g. writing down and providing a retrieval message to a transporter in a vehicle, and writing down a routing plan for the vehicle/transporter). Furthermore, the examiner notes that “routing” under the broadest reasonable interpretation, does not describe some technical mechanism for controlling a vehicle, and thus, merely covers the mental process of determining a route for the vehicle or providing a determined route for the vehicle. Therefore, as the processes above described by the representative independent claims 1, 15, and 16 can be characterized as mental processes (i.e. observation, evaluation, judgment, and opinion), but for the recitation of generic computer components in the claims, the claims fall under the “mental processes” category of judicial exceptions (i.e. abstract ideas).
As claims 1, 15, and 16 are identified by the examiner as reciting concepts that fall under more than one abstract idea grouping (i.e. “certain methods of organizing human activity” and “mental processes”), the examiner considers the limitations together as a single abstract idea for the purposes of the Step 2A Prong Two and Step 2B analysis, in accordance with MPEP 2106.04(II)(B).
Step 2A Prong Two:
Claims 1, 15, and 16 recite the following additional elements:
“a server computer” (e.g. “by a server computer”) of claim 1
“A server computer comprising: a processor; and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 15
“A system comprising: a server computer comprising, a processor, and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 16
“wherein the transporter is a vehicle” of claims 1, 15, and 16 (to the extent “a vehicle” is treated as an additional element)
The judicial exception (i.e. abstract idea) recited in claims 1, 15, and 16 is not integrated into a practical application because the claims recite mere instructions to apply the abstract idea (i.e. receiving requests to deliver food items and transport a return item to a service provider, and managing and routing a transporter based on the requests) using generic computers/computer components (i.e. “a server computer” of claim 1; “A server computer comprising: a processor; and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 15; and “A system comprising: a server computer comprising, a processor, and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 16). See MPEP 2106.05(f), showing “[C]laims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp.”
The use of the server computer (claim 1) and a processor (claims 15-16) to receive information, or transmit information to a transporter merely describes the use of generic computers in their ordinary capacity to apply the abstract idea within a computer environment. Further, that the transporter is specified to be a vehicle merely generally links the performance of the abstract idea to a particular field of use (vehicle based transportation). The claim describes “providing a retrieval message…” and “routing…” but does not describe the processor or server computer directly controlling systems within the vehicle to control driving/movement of the vehicle, and thus at most simply describes sending or transmitting data to a vehicle (which as per above, is no more than the ordinary functions associated with generic computers) to apply the abstract idea on computers. The use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application, but instead also indicates that the claims recite mere instructions apply the abstract idea using a generic computer or computer components. Therefore, because the claims, considered as a whole, do not recite anything that integrates the abstract idea into a practical application, the claims are directed to an abstract idea.
Step 2B:
Claims 1, 15, and 16 do not include additional elements, whether considered alone or as an ordered combination, that are sufficient to amount to significantly more than the judicial exception (i.e. abstract idea) because as mentioned above, the claims recite mere instructions to apply the abstract idea (i.e. receiving requests to deliver food items and transport a return item to a service provider, and managing and routing a transporter based on the requests) using generic computers/computer components (i.e. “a server computer” of claim 1; “A server computer comprising: a processor; and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 15; and “A system comprising: a server computer comprising, a processor, and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations…” of claim 16). See MPEP 2106.05(f), showing “[C]laims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp.”
The use of the server computer (claim 1) and a processor (claims 15-16) to receive information, or transmit information to a transporter merely describes the use of generic computers in their ordinary capacity to apply the abstract idea within a computer environment. Further, that the transporter is specified to be a vehicle merely generally links the performance of the abstract idea to a particular field of use (vehicle based transportation). The claim describes “providing a retrieval message…” and “routing…” but does not describe the processor or server computer directly controlling systems within the vehicle to control driving/movement of the vehicle, and thus at most simply describes sending or transmitting data to a vehicle (which as per above, is no more than the ordinary functions associated with generic computers) to apply the abstract idea on computers. The use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea does not provide significantly more, but instead also indicates that the claims recite mere instructions apply the abstract idea using a generic computer or computer components. The courts have also found “Receiving or transmitting data over a network, e.g., using the Internet to gather data” to describe well-understood, routine, and conventional computer functions. See MPEP 2106.04(d)(II), citing Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Considering the additional elements as an ordered combination does not add anything that amounts to significantly more. Therefore, the claims are directed to an abstract idea without significantly more.
Dependent Claims 2-14 and 17-20:
Dependent claims 2-14 and 17-20 are directed to the same abstract idea as independent claims 1 and 16 above as they do not recite anything that integrates the abstract idea into a practical application or amounts to significantly more than the abstract idea.
Claims 2, 4-10, 13, and 19-20 recite the following limitations, which do not add any additional elements but merely further describe further functions of the abstract idea itself or provides context pertaining to the performance of the abstract idea: where the service provider is a merchant that previously sold the item to the end user (claim 2); wherein the item is in a sealed box (claim 4); wherein the transporter or an entity that operates the server computer is not responsible for damage to the item if the item is delivered to the service provider in the same condition as in the picture of the item (claim 5); wherein the transporter verifies a condition of the item (claim 6); wherein the transporter verifies that the item is operational (claim 7); transporting, by the transporter and using the routing, the one or more food items to the end user; and after delivering the one or more foods items to the end user, retrieving the non-perishable item from the end user; and transporting, by the transporter, the non-perishable item from the end user to the service provider (claim 8 – note that these limitations merely further describe a commercial interaction/commercial process for transporting the items from one place to another, and do not describe any technical mechanism for direct control of a vehicle); determining, by the transporter, that the item is suitable for return to the service provider before transporting the non-perishable item from the end user to the service provider (claim 9); determining, by the transporter, that the item is suitable for return to the service provider before transporting the non-perishable item from the end user to the service provider (claim 10); wherein the item is an open box item (claim 13); wherein the non-perishable items are return items (claim 19); and wherein the service providers are restaurants (claim 20).
Claims 3, 14, and 17 specify that the vehicle/transporter is a car, and claims 12 and 18 specify that the vehicle is a drone. However, these limitations at most generally link the performance of the abstract idea to a particular field of use or technological environment (delivery via a car or drone) – and do not recite any technical functions or mechanism associated with control of the car or drone.
Claim 11 recites “scanning a QR code on an end user device by a transporter user device, wherein the QR code is associated with delivery of the non-perishable item to the service provider” – however, this merely describes the concept of reading information from another device using a generic computer (using a “transporter user device” to scan a generic QR code), and does not recite an improvement to how QR codes are generated or read by a scanning device. The limitation may also be considered insignificant extra-solution activity (mere data gathering), and the courts have found electronically scanning or extracting data to be well-understood, routine, and conventional computer activity. See MPEP 2106.05(d)(II), citing Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition). That a QR code is displayed on a user device does not add anything meaningful to the claims and simply describes the use of a computer to perform generic computer functions (display data). Also see Secured Mail Solutions, LLC v. Universal Wilde, Inc., showing using a barcode to communicate information about the mail object is not a technological improvement.
Therefore, claims 1-20 are ineligible under § 101.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-4, 8, 14-17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam).
Claim 1: Dearlove teaches:
A method (Dearlove: ¶ 0027, ¶ 0046-0048 showing methods for delivering and/or returning products) comprising:
receiving, by a server computer (Dearlove: ¶ 0056-0058, ¶ 0200 showing one or more server computers for executing tote delivery service logic and network enterprise login for receiving customer orders for delivery service), a fulfillment request message from an end user to deliver one or more food items from one or more other service providers to the end user (Dearlove: ¶ 0046, ¶ 0066-0067 showing customer places an order to deliver one or more items to the customer address; see Figs. 11-12 showing order placement; and ¶ 0165 showing the one or more ordered items can include food products; regarding “one or more other service providers,”);
receiving, by the server computer (Dearlove: ¶ 0200 showing server executing disclosed embodiments), a request from the end user of an item to deliver the item to a service provider, wherein the item is a non-perishable item (Dearlove: ¶ 0042, ¶ 0139, ¶ 0150-0157 showing customer requests return of a different item, which may be performed during delivery of the tote delivery items, to be returned from the customer address to a network enterprise or other entity, i.e. service provider; see ¶ 0055, ¶ 0065, ¶ 0157, ¶ 0178, ¶ 0180 showing returns may be made to the network service or to other entities via the tote delivery service; ¶ 0042, ¶ 0065 showing video game rentals, DVD/Blu-Ray Disc rentals, exchanges, items for repair, items being sent to the network enterprise for credit or resale, and so on); and
With respect to the limitations:
providing, by the server computer, a retrieval message comprising an instruction to a transporter which causes the transporter to travel to the end user to deliver the one or more food items from the one or more other service providers and retrieve the non-perishable item from the end user after delivering the one or more food items to the end user
by routing the transporter to the one or more other service providers, and then to a location of the end user, and then to the service provider, wherein the transporter is a vehicle
Dearlove teaches directing delivery causing a transporter/delivery vehicle to pickup/load goods at a sortation node of the network enterprise, i.e. one or more other service providers (Dearlove: ¶ 0032, ¶ 0045, ¶ 0048, ¶ 0064, ¶ 0192), travel to the end user to deliver one or more food items (Dearlove: ¶ 0063-0064, ¶ 0048 – with ¶ 0048 showing “the customer's tote(s) is delivered to and dropped off at the specified customer address on the tote delivery day for the tote delivery zone”; see ¶ 0165 specifying food items), and then pickup one or more return items from the location of the customer to an entity/service provider to which the item is being returned (Dearlove: ¶ 0042 “so on may be delivered from a customer to the network enterprise or to some other entity via return totes and the tote delivery service”; and see ¶ 0064-0065, ¶ 0180, ¶ 0189 specifying return item(s) from the customer picked up at same time as delivery of the other items, and returned via the delivery service (transporter) from the customer to the other entity or a sortation node which may be owned by a service provided entity different from the network enterprise) – but Dearlove merely lacks an explicit routing (e.g. generating a delivery route) of the delivery transporter/vehicle to carry out the route.
However, Ramalingam teaches generating a delivery route by a delivery server that generates delivery routes for the delivery service and interfaces with the delivery service (transporter), by routing the delivery service (transporter) from to deliver goods to and pickup items from a customer (Ramalingam: ¶ 0051 “The delivery server 28 may manage delivery routes for a delivery service 30 which delivers goods to and from a customer”; ¶ 0053 “The delivery server 28 may manage multiple delivery trucks/routes throughout the day for the delivery service 30” and showing generating a delivery report, e.g. “the delivery server 28 may display the delivery report to a delivery operator such as, for example, a delivery truck operator or delivery personnel, via an operator device”; ¶ 0070 “The delivery module 58 may receive customer delivery address information from the web or application module 56 and may determine customer location, compare location with existing delivery routes, determine available delivery times, schedule deliveries, create delivery routes, and otherwise manage delivery of customer orders…The processing device 50 may further close orders for a delivery route, finalize the delivery route, and interface with a delivery service 30 to deliver orders to customers”), wherein the delivery route may include picking up orders for delivery to the customer, such as groceries, at a selected store and delivering the items to the customer location (Ramalingam: ¶ 0040, ¶ 0045-0046, ¶ 0053, ¶ 0089), and then transporting return items received from the customer at the time of delivery back to a store or other service provider (Ramalingam: ¶ 0041, ¶ 0088-0089 – e.g. ¶ 0089 “ delivery service 30 then delivers the purchased goods to the customer and collects the customer-owned items identified by the customer and returns the customer-owned items to the home shopping center for servicing” but note that the other paragraphs above also show return to different entities or service providers).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the generation of the instruction for routing of delivery service providers from a store to customer location and then to another service provider location of Ramalingam in the delivery and return system of Dearlove with a reasonable expectation of success of arriving at the claimed invention, with the motivation to solve the problems that “Many customers desire to order items or goods remotely, e.g., on-line, through the Internet, or using a specially designed application or app on a mobile device, such as a tablet or cell phone…. In addition, customers may desire to have customer-owned items collected” (Ramalingam: ¶ 0002), “However, in some instances, collecting, servicing, and returning customer-owned items may include significant delivery expense such that the benefit and convenience offered by such services is outweighed by the costs associated with providing such services” (Ramalingam: ¶ 0003), and thereby “allow customers to place orders for goods and items to be delivered from a store to a customer specified location and to collect customer-owned items from the customer when the delivery order is delivered” (Ramalingam: ¶ 0005). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 2: Dearlove/Ramalingam teach claim 1. Dearlove, as modified above, further teaches:
where the service provider is a merchant that previously sold the item to the end user (Dearlove: ¶ 0150-0154 showing customer may specify one or more items to be returned to the network enterprise and selects items to be returned for a refund)
Claim 3: Dearlove/Ramalingam teach claim 2. With respect to the following limitations, Dearlove discusses delivery vehicles which would highly suggest automobiles such as cars to one of ordinary skill in the art, Dearlove is silent regarding the vehicle being a car (which is interpreted according to https://www.merriam-webster.com/dictionary/car as “a vehicle moving on wheels”). However, Ramalingam teaches:
wherein the vehicle is a car (Ramalingam: ¶ 0041 “delivery van drivers” and ¶ 0053 showing delivery trucks, i.e. a vehicle moving on wheels according to the definition above)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the vehicle being a van or truck as taught by Ramalingam in the delivery and return system of Dearlove/Ramalingam, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 4: Dearlove/Ramalingam teach claim 3. Dearlove, as modified above, further teaches:
wherein the item is in a sealed box (Dearlove: ¶ 0049 “A tote 250 may provide a resealable opening or “lid” 256 via which items may be placed into and removed from the tote 250. In some embodiments, the lid 256 may be lockable or otherwise securable”)
Claim 8: Dearlove/Ramalingam teach claim 1. Dearlove, as modified above (to include the route generation/management and display to a driver as per Ramalingam in claim 1), further teaches:
transporting, by the transporter and using the routing, the one or more food items to the end user (Dearlove: ¶ 0063-0064, ¶ 0048 – with ¶ 0048 showing “the customer's tote(s) is delivered to and dropped off at the specified customer address on the tote delivery day for the tote delivery zone”; see ¶ 0165 specifying food items); and
after delivering the one or more foods items to the end user, retrieving the non-perishable item from the end user (Dearlove: ¶ 0042 items are picked up and “delivered from a customer to the network enterprise or to some other entity via return totes and the tote delivery service”; and see ¶ 0064-0065, ¶ 0180, ¶ 0189 specifying return item(s) from the customer picked up at same time as delivery of the other items, and returned via the delivery service (transporter) from the customer to the other entity or a sortation node which may be owned by a service provided entity different from the network enterprise); and
transporting, by the transporter, the non-perishable item from the end user to the service provider (Dearlove: ¶ 0042 items are picked up and “delivered from a customer to the network enterprise or to some other entity via return totes and the tote delivery service”; and see ¶ 0064-0065, ¶ 0180, ¶ 0189 specifying return item(s) from the customer picked up at same time as delivery of the other items, and returned via the delivery service (transporter) from the customer to the other entity or a sortation node which may be owned by a service provided entity different from the network enterprise)
Claim 14: Dearlove/Ramalingam teach claim 1. With respect to the following limitations, Dearlove discusses delivery vehicles which would highly suggest automobiles such as cars to one of ordinary skill in the art, Dearlove is silent regarding the vehicle being a car (which is interpreted according to https://www.merriam-webster.com/dictionary/car as “a vehicle moving on wheels”). However, Ramalingam teaches:
wherein the transporter is a car (Ramalingam: ¶ 0041 “delivery van drivers” and ¶ 0053 showing delivery trucks, i.e. a vehicle moving on wheels according to the definition above)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the vehicle being a van or truck as taught by Ramalingam in the delivery and return system of Dearlove/Ramalingam, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 15: See the rejection of claim 1 above teaching substantially similar limitations. Dearlove further teaches A server computer comprising: a processor; and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations (Dearlove: ¶ 0056, ¶ 0200-0205 showing computer system implemented as one or more server computers comprising a processor and computer readable medium/memory storing instructions executable by the processor).
Claim 16: See the rejection of claim 1 above teaching substantially similar limitations. Dearlove further teaches A system comprising: a server computer comprising, a processor, and a non-transitory computer readable medium, the non-transitory computer readable medium comprising code, executable by the processor for performing operations (Dearlove: ¶ 0056, ¶ 0200-0205 showing computer system implemented as one or more server computers comprising a processor and computer readable medium/memory storing instructions executable by the processor).
Claim 17: See the rejection of claim 14 above.
Claim 19: Dearlove/Ramalingam teach claim 16. Dearlove, as modified above, further teaches:
wherein the non-perishable items are return items (Dearlove: ¶ 0042, ¶ 0065 showing items are return items and showing various non-perishable types of items)
Claims 5-6 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam), and further in view of US 20220147927 A1 to Kieboom et al. (Kieboom).
Claim 5: Dearlove/Ramalingam teach claim 4. With respect to the following limitation, Dearlove/Ramalingam do not explicitly teach the following limitations, however, Kieboom teaches:
wherein the transporter or an entity that operates the server computer is not responsible for damage to the item if the item is delivered to the service provider in the same condition as in the picture of the item (Kieboom: ¶ 0030 showing product condition is entered and photographed at time of picked by the driver, and ¶ 0032 is checked upon arrival at return location to ensure the condition of the item remains the same, i.e. transporter is not responsible for any damage since item is delivered in the same condition pictured previously; not that “not responsible” is a negative limitation that is interpreted with the appropriate patentable weight)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included auditing the item condition to check that the product is in the same condition upon pickup of Kieboom in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation to “ensure that the product is in the same condition as when the driver took a picture of product upon pickup” (Kieboom: ¶ 0032). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 6: Dearlove/Ramalingam teach claim 1. With respect to the following limitation, Dearlove/Ramalingam do not explicitly teach the following limitations, however, Kieboom teaches:
wherein the transporter verifies a condition of the item (Kieboom: ¶ 0030 showing condition of the product is verified by the driver prior to transmitting the pickup notification to the PRAE system and see ¶ 0030-0032 generally)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included auditing the item condition and capturing an image of the condition of the item upon pickup of Kieboom in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation to “ensure that the product is in the same condition as when the driver took a picture of product upon pickup” (Kieboom: ¶ 0032). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 9: Dearlove/Ramalingam teach claim 8. With respect to the following limitations, while Dearlove/Ramalingam teach the transporter for picking up and transporting a return item from the customer as per claims 1/8 above, they do not explicitly teach the following. However, Kieboom teaches:
determining, by the transporter, that the item is suitable for return to the service provider before transporting the non-perishable item from the end user to the service provider (Kieboom: ¶ 0030 showing product condition is entered and photographed at time of picked by the driver, and ¶ 0032 is checked upon arrival at return location to ensure the condition of the item remains the same, i.e. before transporting the return item)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included auditing the item condition to check that the product is in the same condition upon pickup of Kieboom in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation to “ensure that the product is in the same condition as when the driver took a picture of product upon pickup” (Kieboom: ¶ 0032). It would have also been obvious to one of ordinary skill in the art before the effective filing date of the invention to do so, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 10: See rejection of claim 9 above, as claim 10 is a duplicate of claim 9.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam), and further in view of US 20220270040 A1 to Kieboom et al. (“Hart” for clarity).
Claim 7: Dearlove/Ramalingam teach claim 1. With respect to the following limitations, Dearlove/Ramalingam do not explicitly teach verifying that the item is operational, however, Hart teaches:
wherein the transporter verifies that the item is operational (Hart: ¶ 0132 showing “the inspection may entail the driver turning the product on and then conducting a set of tasks as instructed to him/her via the driver's electronic device. For a simple device, such as a lamp, the driver may be instructed to simply plug the lamp into an electrical receptacle (preferably a receptacle in the driver's vehicle) and turn the lamp on to verify that the lamp is operational. For more complicated devices, the driver is instructed to turn on the device and performs steps that are directed to the specific product being picked up”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the product inspection upon picking up a return item of Hart in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation to “provide for more efficient and accurate exchange processing by auditing/inspecting products to be returned prior to shipping/transport” (Hart: ¶ 0065).
Claims 11-12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam), and further in view of US 20200019925 A1 to Tokhtabaev.
Claim 11: Dearlove/Ramalingam teach claim 8. With respect to the limitations:
scanning a QR code on an end user device by a transporter user device, wherein the QR code is associated with delivery of the non-perishable item to the service provider
While Dearlove/Ramalingam teach transporter pickup of a return item to the service provider as per claim 1 above (Dearlove: ¶ 0042, ¶ 0064-0065, ¶ 0180, ¶ 0189; and also see Ramalingam at ¶ 0041, ¶ 0088-0089), but they do not explicitly teach that the pickup from the customer includes scanning a QR code displayed on a customer device.
However, Tokhtabaev teaches a customer/sender device displaying a QR code on their smart phone, which is scanned by a vehicle scanning device of a transporter vehicle, in order to allow the customer to place the package for pick-up and transport by a driver/vehicle (Tokhtabaev: ¶ 0006, ¶ 0026, ¶ 0030, ¶ 0046, Fig. 2B).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the scanning of a QR code on a customer device to complete pickup of Tokhtabaev in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation to address the problems that “there is still a need for improved package pick-up and delivery services, including making it convenient for a sender to have a package picked up, and especially for parcels which can be or must be delivered immediately” (Tokhtabaev: ¶ 0003) and “eliminates the need for a driver to open the lockbox 22, and facilitates the use of autonomous vehicles for the vehicles” (Tokhtabaev: ¶ 0030).
Claim 12: Dearlove/Ramalingam teach claim 1. With respect to the following limitations, Dearlove/Ramalingam do not explicitly teach, however, Tokhtabaev teaches:
wherein the transporter is a drone (Tokhtabaev: ¶ 0024, ¶ 0006, ¶ 0027, ¶ 0051 showing using drone to transport packages instead of delivery via ground vehicles)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the use of a drone as the package transporter of Tokhtabaev in the delivery and return system of Dearlove/Ramalingam with a reasonable expectation of success of arriving at the claimed invention, with the motivation that “Drone-flying the package 44 is an attractive option when speed is of the essence, or when traffic on the roads is congested” (Tokhtabaev: ¶ 0051). Furthermore, since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself. That is in the substitution of a drone as a transporter of the package of Tokhtabaev for the vehicle(s) of Dearlove/Ramalingam. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 18: See the rejection of claim 12 above.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam), and further in view of US 20200074526 A1 to Bikumala et al. (Bikumala).
Claim 13: Dearlove/Ramalingam teach claim 1. With respect to the following limitation, Dearlove/Ramalingam do not explicitly mention the item being an open box item, however, Bikumala teaches:
wherein the item is an open box item (Bikumala: ¶ 0050 showing item for return is an open box item)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the item being an open box item as taught by Bikumala in the delivery and return system of Dearlove/Ramalingam, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over US 20110320376 A1 to Dearlove et al. (Dearlove) in view of US 20160224934 A1 to Ramalingam et al. (Ramalingam), and further in view of US 20140278635 A1 to Fulton et al. (Fulton).
Claim 20: Dearlove/Ramalingam teach claim 16. With respect to the following limitation, Dearlove/Ramalingam do not explicitly teach the service provider(s) being restaurants, however, Fulton teaches:
wherein the service providers are restaurants (Fulton: ¶ 0010, ¶ 0043 showing pickup of a customer order from a restaurants or other merchants/service providers and delivery to the customer)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the service provider(s) being at least one restaurant as taught by Fulton in the delivery and return system of Dearlove/Ramalingam, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
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/HUNTER MOLNAR/Examiner, Art Unit 3628
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