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 the Claims
Claims 1-12 are currently pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 8, and 12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 4, 8, and 12 recite “when the baggage is handed over to the customer, adding a separate flag to indicate that the customer has received the baggage to the accommodation information of the customer.” The only mention of a delivery flag other than the ON/OFF completion flag is in ¶ 0061 of the published Specification. “Incidentally, whether or not the customer has used the baggage delivery can be determined by whether or not the delivery completion flag in the accommodation information is ON. Alternatively, when the baggage is actually handed over to the customer, another flag (i.e., a flag indicating that the customer has used the delivery and has received the baggage) may be given to the accommodation information, and it may be determined from the flag.” (emphasis added).
"When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.... It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015)." MPEP 2161.01(I).
The subject matter of the claims (recited above) does not conform to the disclosure in such a manner that one of ordinary skill in the art would recognize the claimed system as being that which Applicant adequately described as the invention or what Applicant actually had possession of at the time of the invention. A review of the disclosure does not reveal any example or algorithm for using the ON/OFF delivery flags in combination with a “separate flag” (instead, these are described as distinct embodiments in the disclosure above). Applicant’s failure to disclose any meaningful structure/algorithm as to how these elements are used to adjust values supports a finding that Applicant did not fully possess of these features at the time of filing.
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 1-12 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.
Claims 1, 5, and 9 recite the limitation "the transportation management server.” There is insufficient antecedent basis for this limitation in the claim. The dependent claims inherit the rejections of their respective base claims and, as such, are rejected for the same reasons.
Claims 3, 7, and 11 recite “if the customer has prepaid the accommodation fee, charging only the delivery fee of the baggage to the customer.” This conflicts with the requirements of their respective independent claims, which explicitly require “charging total fee including accommodation fee and delivery fee to the customer” if the delivery completion flag is on.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter (abstract idea without significantly more). Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. 208 (2014). Claims 1-12, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The claims recite an abstract idea reflected in the representative functions of the independent claims—including:
(a) obtaining accommodation information of a customer from accommodation information configured to allow flags indicating delivery status of baggage to be added;
(b) inquire about the delivery status of baggage addressed to the customer;
(c) if the delivery status indicates that delivery has been completed, adding a delivery completion flag to accommodation information of the customer; and
(d) when the customer checks out, if the delivery completion flag is ON, charging total fee including accommodation fee and delivery fee to the customer.
These limitations taken together qualify as a method of organizing human activities because they recite collecting, analyzing, and outputting information for coordinating and tracking the delivery of baggage to traveling people via a service provider and determining a cost to charge (i.e., in the terminology of the 2019 Revised Guidance, fundamental economic practices; commercial interactions (including marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, following rules or instructions). Additionally, it recites record-keeping steps that could be performed mentally and with pen and paper (i.e., managing accommodation information of a customer and delivery statuses/flags).
It shares similarities with other abstract ideas held to be non-statutory by the courts (see Electronic Comm. v. Shopperschoice.com, LLC, 958 F.3d 1178, 1181 (Fed. Cir. 2020)—business practices designed to advise customers of the status of delivery of their goods, similar because at another level of abstraction the claims could be characterized as business practices designed to advise customers of the status of delivery of their baggage; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of a baggage delivery, then displaying the results; Secured Mail Solutions v. Universal Wilde, 873 F.3d 905 (Fed. Cir. 2017)—communicating information about a mail object using a personalized marking, similar because at another level of abstraction the claims could be characterized as communicating information about a delivery object using accommodations and customer information; Smart Sys. Innovations v. Chicago Transit Authority, 873 F.3d 1364 (Fed. Cir. 2017)—formation of financial transactions in a particular field (i.e., mass transit) and data collection related to such transactions, similar because at another level of abstraction the claims could be characterized as formation of financial transactions in a particular field (i.e., hotel baggage delivery) and data collection related to such transactions).
These cases describe significantly similar aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The elements merely serve to provide a general link to a technological environment (e.g., computers and the Internet) in which to carry out the judicial exception (memory that is configured to store instructions, processor that is configured to execute the instructions, non-transitory recording medium on which a computer program, computer, database, transportation management server—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself (e.g., modules, program code, etc. to automate the abstract idea), this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." Aside from such instructions to implement the abstract idea, they are solely used for generic computer operations (e.g., receiving, storing, retrieving, transmitting data), employing the computer as a tool. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) ("[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.") (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,1256 (Fed. Cir. 2014)) (emphasis added).
The claims only manipulate abstract data elements into another form. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools to improve the functioning of the abstract idea identified above. Looking at the additional limitations and abstract idea as an ordered combination and as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Rather than any meaningful limits, their collective functions merely provide generic computer implementation of the abstract idea identified in Prong One. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2 (i.e., they amount to nothing more than a general link to a particular technological environment and instructions to apply it there). Moreover, the additional elements recited are known and conventional computing elements (memory that is configured to store instructions, processor that is configured to execute the instructions, non-transitory recording medium on which a computer program, computer, database, transportation management server—see published Specification ¶¶ 0029, 38-44 describing these at a high level of generality and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these basic computer functions).
"The use and arrangement of conventional and generic computer components recited in the claims—such as a database, user terminal, and server— do not transform the claim, as a whole, into 'significantly more' than a claim to the abstract idea itself. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea." Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citations and quotation marks omitted). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Dependent Claims Step 2A:
The limitations of the dependent claims merely set forth further refinements of the same abstract idea identified above without changing the analysis already presented (i.e., they merely narrow the same abstract idea identified above without adding any new additional elements beyond it). Additionally, for the same reasons as above, the limitations fail to integrate the abstract idea into a practical application because they use the same general link technological environment and instructions to implement the abstract idea as the independent claims (i.e. generic computers).
Dependent Claims Step 2B:
The dependent claims merely use the same general link to technological environment and instructions to implement the abstract idea. They do not introduce any new additional elements to be analyzed here.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zur, U.S. Pat. Pub. No. 2019/0188431 (Reference A of the attached PTO-892).
As per claim 5, Zur teaches a baggage delivery management method comprising: (a) obtaining accommodation information of a customer from an accommodation information database that is configured to allow flags indicating delivery status of baggage to be added (¶¶ 0026, 49); (b) access the transportation management server to inquire about the delivery status of baggage addressed to the customer (¶¶ 0031, 49).
The limitations of “(c) if the delivery status indicates that delivery has been completed, adding a delivery completion flag to accommodation information of the customer; and (d) when the customer checks out, if the delivery completion flag is ON, charging total fee including accommodation fee and delivery fee to the customer” are contingent on certain conditions being met. As this is a claim directed to a process, the scope of the claim includes an embodiment where they are not required to demonstrate infringement or anticipation. See Ex parte Schulhauser, Appeal No. 2013-007847 (PTAB Apr. 28, 2016) (precedential) (claim construction of method steps that only need to be performed if certain conditions are met reads on an embodiment where these steps are no performed).
As per claims 6-7, these only add more conditional limitations and are anticipated by Zur for the same reasons as 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.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zur.
As per claim 8, Zur teaches claim 5 as above. With respect to “when the baggage is handed over to the customer, adding a separate flag to indicate that the customer has received the baggage to the accommodation information of the customer” this appears to be a duplication of the delivery completion flag already present in both claim 5 and Zur (¶¶ 0048-49). The only function of the “separate flag” is to indicate a completed delivery, which is the same purpose of the flag already recited. Thus, It would have been prima facie obvious to incorporate this element because it is a mere duplication of parts that would serve the same purpose and yield the same predictable result of the first flag. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (mere duplication of parts has no patentable significance unless a new and unexpected result is produced).
Conclusion
No prior art rejections have been issued for claims 1-4 and 9-12. The closest prior art has been cited below and in the parent application. While they relate to baggage delivery at a hotel, none of the references sufficiently disclose instructions for performing: “when the customer checks out, if the delivery completion flag is ON, charging total fee including accommodation fee and delivery fee to the customer” in combination with the other limitations of the claims.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bielefeldt, et al., U.S. Pat. Pub. No. 2017/0300851 (Reference A of the attached PTO-892) discloses delivery completion flags (¶¶ 0156-58).
Yamada, et al., U.S. Pat. Pub. No. 2003/0149637 (Reference B of the attached PTO-892) discloses delivery completion flags (¶ 0030).
Rüger, Baggage handling, Sustainable Rail Transport: Proceedings of RailNewcastle Talks, Cham: Springer International Publishing, 2017, pgs. 93-112 (Reference U of the attached PTO-892) relates to baggage delivery.
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/DANIEL VETTER/Primary Examiner, Art Unit 3628
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