DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Information Disclosure Statements
The Information Disclosure Statements (IDS) filed on 7/15/2025 have been acknowledged.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware of, in the specification.
Objection to the Drawings
The drawings (Figures 3 and 6) are objected to as they have been submitted in color (Gray Scaled). Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via EFS-Web or three sets of color drawings or color photographs, as appropriate, if not submitted via EFS-Web, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
Title Objections
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Status of Application
Claims 1-20 are pending.
Claims 1, 9, and 14 are independent.
Non-Final Office Action
CLAIM INTERPRETATION
During examination, claims are given the broadest reasonable interpretation consistent with the specification and limitations in the specification are not read into the claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 10 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP 2111.01 (I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See 15 MPEP 2111.01 (II).
A first exception to the prohibition of reading limitations from the specification into the claims is when the Applicant for patent has provided a lexicographic definition for the term. See MPEP §2111.01 (IV). Following a review of the claims in view of the specification herein, the Office has found that Applicant has not provided any lexicographic definitions, either expressly or implicitly, for any claim terms or phrases with any reasonable clarity, deliberateness and precision. Accordingly, the Office concludes that Applicant has not acted as his/her own lexicographer.
A second exception to the prohibition of reading limitations from the specification into the claims is when the claimed feature is written as a means-plus-function. See 35 U.S.C. §112(f) and MPEP §2181-2183. As noted in MPEP §2181, a three prong test is used to determine the scope of a means-plus-function limitation in a claim:
the claim limitation uses the term "means" or "step" or a term used as a substitute for "means" that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function
the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to" or "so that"
the term "means" or "step" or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
The Office has found herein that the claims do not contain limitations of means or means type language that must be analyzed under 35 U.S.C. §112 (f).
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 1-8, 9-13, and 14-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
101 Analysis – Step 1
Claim 1 is directed to a process. Therefore, Claim 1 is within at least one of the four statutory categories.
Claim 9 is directed to a process. Therefore, Claim 9 is within at least one of the four statutory categories.
Claim 14 is directed to an apparatus (server). Therefore, Claim 14 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes.
Claims 1, 9 and 14 include limitations that recite an abstract idea (emphasized below) and Claim 14 will be used as a representative claim for the remainder of the 101 rejections.
Claim 14 recites: A server computer comprising: a processor; and a non-transitory computer readable medium,
the non-transitory computer readable medium comprising instructions, executable by the processor, for implementing operations including:
storing, in a location database, a pin location in association with an identifier for a retrieval location;
receiving, over a network, a plurality of requests from end user devices, the plurality of requests are for items from the retrieval location;
providing, over the network, the pin location to a plurality of transporter devices, for retrieving the items at the retrieval location;
receiving, over the network, retrieval signals from the plurality of transporter devices, wherein a retrieval signal provides information for a retrieval location point measured by a transporter device, the retrieval signal generated responsive to an input at the transporter device, the input indicating retrieval of one or more items at the retrieval location;
determining a central value of the retrieval location points, as a candidate new pin location for the retrieval location;
determining a first geofence surrounding the pin location, wherein the pin location is within the first geofence;
determining a second geofence surrounding the candidate new pin location, wherein the candidate new pin location is within the second geofence; determining a first number of paths intersecting the first geofence, each of the first number of the paths corresponding to a path of each individual transporter device of first transporter devices;
determining a second number of paths intersecting the second geofence, each of the second number of the paths corresponding to a path of each individual transporter device of second transporter devices;
determining that the second number of the paths intersecting the second geofence is greater than the first number of the paths intersecting the first geofence;
and assigning the identifier to the central value to replace the pin location of the retrieval location in the location database with a new pin location corresponding to the central value, in response to the second number of the paths being greater than the first number of the paths,
wherein the first transporter devices and the second transporter devices are included in the plurality of transporter devices.
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers performance of the limitation in the human mind. Specifically, the “the receiving, determining and assigning” steps encompass a user to receive data, make some determinations, and assign an identifier to the data. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis in the 2019 PEG, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” while the bolded portions continue to represent the “abstract idea”):
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations of “controller is programmed”, the examiner submits that these limitations are an attempt to generally link additional elements to a technological environment. In particular, the “processor” is recited at a high level of generality and merely automates the receiving, determining and assigning steps, therefore acting as a generic computer/server to perform the abstract idea. Additionally, the processor is claimed generically and are operating in their ordinary capacity and do not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. The additional limitations are no more than mere instructions to apply the exception using a processor. Furthermore, the examiner submits that the recitations of receiving data, determining things, and assigning a identifier are mere definitions that do not necessarily impose any meaningful limits on performing the steps in the human mind, as it only compares data where a user could in fact perform this mentally or using paper and pencil (gather data, determing, and label the data). In addition to that, the examiner submits that receiving data and using a processor for determining things, are insignificant extra-solution activities that merely use a processor to perform the process. In particular, the receiving steps are recited at a high level of generality (i.e. as a general means of gathering data for use in the determining step), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. Further the assigning step is merely labeling the gathered data.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a processor or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception (MPEP § 2106.05). Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the 2019 PEG, representative independent Claim 14 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of the apparatus, the processor amounts to nothing more than applying the exception using a generic computer component. Generally applying an exception using a generic computer component cannot provide an inventive concept. And as discussed above, the additional limitations of receiving data determinizing and assigning based on the determination, the examiner submits that these limitations are insignificant extra-solution activities.
Further, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if they are more than what is well-understood, routine, conventional activity in the field. The additional limitations of receiving the data and determining and assigning are well-understood, routine, and conventional activities because the background recites that receiving data from devices. MPEP 2106.05(d)(II), and the cases cited therein, including Intellectual Ventures I, LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016), TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610 (Fed. Cir. 2016), and OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner. Hence, Claim 14 is not patent eligible.
Further Claims 1 and 9 are not patent eligible for the same reasons.
Dependent Claims 2-8, 10-14, and 16-20 when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea. The additional elements, if any, in the dependent claims are not sufficient to amount to significantly more than the judicial exception for the same reasons as with Claims 1, 8, and 14.
Office Note: In order to overcome this rejection, the Office suggests further defining the limitations of the independent claims, for example linking the claimed subject matter to a non-generic device and controlling a vehicle with the assigned label. Limitations such as these suggested above would further bring the claimed subject matter out of the realm of abstract idea and into the realm of a statutory category.
Claim Rejections - 35 USC § 101-Double Patenting
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.
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).
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of US Patent 12,411,015. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of Claim 1 are captured in Claim 1 of US Patent 12,411,015. The geofencing, receiving and multiple determining steps are all in both and overlap, thus Claim 1 of US Patent 12,411,015 is not patentably distinct from Claim 1 of the current application. Further, Claims 2-8 are identical to Claims 2, 4-8, and 10 of US Patent 12,411,015.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 11 of US Patent 12,411,015. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of Claim 9 are captured in Claim 11 of US Patent 12,411,015. The geofencing, receiving and multiple determining steps are all in both and overlap, thus Claim 11 of US Patent 12,411,015 is not patentably distinct from Claim 9 of the current application.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 12 of US Patent 12,411,015. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of Claim 14 are captured in Claim 12 of US Patent 12,411,015. The geofencing, receiving and multiple determining steps are all in both and overlap, thus Claim 12 of US Patent 12,411,015 is not patentably distinct from Claim 14 of the current application.
Further, Claims 15-20 are identical to Claims 13-17 and 19 of US Patent 12,411,015.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Prior Art (Not relied upon)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the attached form 892.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESS G WHITTINGTON whose telephone number is (571)272-7937. The examiner can normally be reached on 7-5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott Browne can be reached on (571)-270-0151. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESS WHITTINGTON/Primary Examiner, Art Unit 3666c
