John Simms et al.

Patent Trials and Appeals Board

Aug 25, 2021

2020005861 (P.T.A.B. Aug. 25, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/584,053 05/02/2017 John Simms 2961
84403 7590 08/25/2021
Dennis Clarke
6717 Corner Lane
McLean, VA 22101
EXAMINER
TALLMAN, BRIAN A
ART UNIT PAPER NUMBER
3628
MAIL DATE DELIVERY MODE
08/25/2021 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN SIMMS,
NOEL SIMMS, and JOHN SIMMS JR.
__________________

Appeal 2020-005861
Application 15/584,053
Technology Center 3600
____________________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
JAMES P. CALVE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1–14, which are all of the pending claims.
See Final Act. 2; Appeal Br. 4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the inventors John Simms, Noel Simms, and John Simms Jr. as the
real parties in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claims 1 and 14 are independent. Representative claim 1 recites:
1. An improved method for the delivery of at least
one ordered item from an origin to at least one of a plurality of
locked storage containers, associated with a corresponding
customer comprising, following the ordering of said delivery,
determining the availability of the said at least one locked
storage container to receive said delivery at one or more times;
identifying a time interval during which said delivery can be
made to said at least one locked storage container; sending a
signal to said at least one locked storage container allowing
access by a delivery agent that is delivering said at least one
ordered item to said at least one locked storage container only
during said time interval, the improvement wherein delivery is
effected with a robotic positioner and a driverless vehicle, said
robotic positioner being associated with an imaging system that
includes one or more cameras, said imaging system configured
to monitor and regulate the robotic positioning of the ordered
item.
Appeal Br. 16 (Claims App.) (filed July 11, 2020).
REJECTIONS
Claims 1, 3, 5, 6, 8, 9, and 12–14 are rejected under 35 U.S.C. § 103
as unpatentable over Simms2 and Byers.3
Claims 1–4, 13, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Simms and Hempsch.4
Claims 2 and 4 are rejected under 35 U.S.C. § 103 as unpatentable
over Simms, Byers, and Hempsch.

2 US 6,933,832 B1, issued August 23, 2005.
3 US 2016/0235236 A1, published August 18, 2016.
4 US 2015/0321595 A1, published November 12, 2015.
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Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Simms, Byers, and Nusser.5
Claims 10 and 11 are rejected under 35 U.S.C. § 103 as unpatentable
over Simms, Byers, and Martenis.6
Claims 1, 3, 5, 6, 8, 9, and 12–14 are rejected on the ground of
nonstatutory obviousness-type double patenting over claims 1 and 21 of
Simms in view of Byers.
Claims 1, 2, 4, 13, and 14 are rejected on the ground of nonstatutory
obviousness-type double patenting over claims 1 and 21 of Simms in view
of Hempsch.
Claim 7 is rejected on the ground of nonstatutory obviousness-type
double patenting over claim 1 of Simms in view of Byers and Nusser.
Claims 10 and 11 are rejected on the ground of nonstatutory
obviousness-type double patenting over claim 1 of Simms in view of Byers
and Martenis.
ANALYSIS
Claims 1, 3, 5, 6, 8, 9, and 12–14
Rejected over Simms and Byers
Independent claims 1 and 14 each recite
the improvement wherein delivery is effected with a robotic
positioner and a driverless vehicle, said robotic positioner being
associated with an imaging system that includes one or more
cameras, said imaging system configured to monitor and
regulate the robotic positioning of the ordered item.
Appeal Br. 16, 17 (Claims App.).

5 US 9,733,646 B1, issued August 15, 2017.
6 US 9,552,564 B1, issued January 24, 2017.
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The Examiner cites Byers to teach a driverless vehicle with a robotic
positioner and imaging system that is configured to monitor and regulate the
robotic positioning of the ordered item as claimed. See Final Act. 2 (citing
Byers ¶¶ 22, 43, 50, 52), 8–9 (citing Byers ¶¶ 18–20, 22, 43, 50, 52, 54, 73).
Appellant argues that Byers does not teach or suggest an “imaging
system configured to monitor and regulate the robotic positioning of the
ordered item” as claimed. Appeal Br. 9–10. Appellant asserts that Byers
calculates a geometric relationship of a vehicle to a storage compartment of
a storage container to align the vehicle with a receiving device but does not
regulate robotic positioning of the ordered item using an imaging system or
a camera. Id.; Reply Br. 1–2.
We agree with the Examiner that Byers uses an imaging system and
cameras to position/align a delivery vehicle of ordered items with a smart
postal box 102 to “fine align [the vehicle’s] package handling systems with
the internal compartments 112 of smart postal box 102.” Byers ¶ 22 (“one
or more cameras on the vehicle may scan beacon lights 214, and calculate
their geometric relationships with the inner storage compartments 112”).
The vehicle “may photograph smart postal box 102 and its beacon lights and
use this information to correctly align itself with smart postal box 102” and
“set its distance from smart postal box 102 and position itself along the road
to be within the range of its package handling robot.” Id. ¶ 43; see Ans. 5–6.
These features may be said to monitor and regulate the positioning of
the vehicle as well as the position of the robotic positioner and ordered items
that are contained inside of the vehicle. However, it is not clear how such
features “monitor and regulate the robotic positioning of the ordered item.”
The robotic positioner does not appear to handle the item during this process
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The Examiner correctly finds that the vehicle’s imaging system and its
cameras use beacon lights on smart postal box 102 to position not only the
vehicle but also the package handling robotic equipment inside the vehicle
so the robotic handling equipment is aligned with the doors and shelves of
the smart postal box. Ans. 6 (citing Byers ¶¶ 50, 52). The robotic package
equipment resident on the vehicle then can deposit a package/item into the
corresponding internal compartment of the smart postal box. Ans. 6 (citing
Byers ¶ 54). However, it is unclear how the imaging system and cameras
“monitor and regulate the robotic positioning of the ordered item” into an
internal compartment of the smart postal box by regulating the package
handling robotic equipment. The imaging system only positions the robotic
package equipment before the equipment positions the item in the smart box.
As Appellant points out, there is no disclosure in Byers of using an
imaging system or cameras to monitor and regulate the robotic positioning
of an ordered item as opposed to monitor and regulate the positioning of the
vehicle relative to the item receiving device. Reply Br. 1–2. Indeed, Byers
indicates that robotic systems do not position any ordered items during this
initial alignment of the vehicle (and the inactive robotic system) with the
smart postal box by using an image system and cameras to align the vehicle
with beacons on smart postal box 102. In this regard, Byers teaches that:
Once the vehicle is parked in position, it may open a network
session with smart postal box 102. After performing security
checks, such as those described in greater detail below, smart
postal box 102 may actuate its doors to expose the opening to
the receiving compartment(s). Robotic systems retrieve the
package to be delivered from the on-vehicle storage racks or
UAV, and move the package into the opened compartment in
smart postal box 102.
Byers ¶ 43.
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These teachings indicate that the imaging system does not “monitor
and regulate the robotic positioning of the ordered item” as claimed, when
the imaging system and its cameras are used to position and align the vehicle
with the smart postal box. Even though the robotic equipment is positioned
adjacent to the smart postal box as a result of this alignment of the vehicle in
which it is positioned, the imaging system does not “monitor and regulate
the robotic positioning of the ordered item” when it monitors and regulates
the positioning of the vehicle next to the smart box.
The Examiner has not identified any teaching in Byers nor explained
from the teachings cited by the Examiner how the imaging system of Byers
is used to monitor and regulate the robotic positioning of an ordered item in
the smart postal box as claimed.
The Specification indicates that “the robotic transfer and positioning
operations may be conducted automatically by the computer 1010.” Spec.
18:17–18. An imaging system 1028 generates and communicates digital
models of the ordered good positioning and transfer area to other computer
controlled devices such as the robotic positioning and transfer tool 1030. Id.
at 18:19–22. “The imaging system 1028 may also include cameras mounted
on the tool that monitor the work areas during the various operations during
the delivery process and aid in guiding the robotic tool 1030 in response to
movements detected during the procedure.” Id. at 18:22–25. We find no
comparable use of an imaging system in Byers “to monitor and regulate the
robotic positioning of an ordered item” as claimed.
Accordingly, we do not sustain the rejection of independent claims 1
and 14 or claims 3, 5, 6, 8, 9, 12, and 13, which depend from claim 1.

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Claims 1–4, 13, and 14
Rejected over Simms and Hempsch
Appellant argues the claims as a group. Appeal Br. 10–12. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019).
Regarding claim 1, the Examiner relies on Hempsch to teach a robotic
transfer device that includes sensor cameras that monitor and control the
positioning of the transfer device relative to the ordered item receptacle and
ensure alignment to place items into the receptacle/remove items from the
receptacle. The Examiner finds that the camera sensors monitors positioning
to control the grabber when it grabs the receptacle. Final Act. 2–3, 16–17.
The Examiner finds the delivery is effected with a driverless autonomous
vehicle that includes a robotic transfer device with a grabber to position an
ordered item inside a receptacle. Id.; see Ans. 4–5, 8–9.
Appellant argues that the mechanism of delivering an item is unclear
in Hempsch such that “the only ‘delivery’ effected by the method/system of
Hempsch occurs in the ‘vehicle’.” Appeal Br. 11–12. We disagree.
Hempsch teaches the use of an imaging system (sensors that include
two or more cameras) to monitor and regulate the robotic positioning of an
ordered item by a transfer device into a receptacle as follows:
The sensor can have at least one camera, which detects the
receptacle. At least one further sensor can also be provided,
which is able to determine the distance to the receptacle. Two
or more cameras can also be provided where required, which
together can determine not only the direction to the receptacle,
but also the distance. The at least one sensor can ensure in any
case that the vehicle is arranged in a position in which the
transfer device is positioned and aligned relative to the
receptacle, such that the transfer device can place the mailing
into the receptacle or remove it from said receptacle.
. . . .
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Where required, the direction and distance to the receptacle can
also be calculated using at least two cameras. If the position of
the receptacle relative to the transfer device is calculated by
means of the at least one sensor, the transfer device can be
controlled, preferably autonomously, depending on the
calculated position of the receptacle relative to the transfer
device. In this manner, compensation can be made for any
inaccurate positioning of the vehicle relative to the receptacle.
Consequently, it can also be ensured that the mailing can be
transferred to the receptacle and/or removed from the receptacle
by the transfer device in a reliable manner.
Hempsch ¶¶ 29, 33.
These teachings indicate that the imaging system uses its cameras to
calculate a direction and distance from a vehicle to a receptacle so a robotic
positioner (transfer device) can be controlled autonomously to transfer a
mailing from the vehicle to the receptacle even if the vehicle is positioned
inaccurately relative to the receptacle. Appellant does not address these
teachings cited by the Examiner. Final Act. 2–3, 15–17; Appeal Br. 10–12.
Instead, Appellant argues that the claims in Hempsch were rejected
repeatedly as being indefinite by another examiner during the prosecution of
Hempsch’s application. Appeal Br. 11–12. In response, the Examiner
explains that the rejection of claims 1–4, 13, and 14 in this application relies
on the teachings of Hempsch as presented in the specification and drawings
of Hempsch. Ans. 8–9. In reply, Appellant asserts that “it is that very same
‘teachings found in the drawings and specification’ that was deemed non-
enabling by the Examiner.” Reply Br. 2. This latter argument regarding the
alleged non-enablement of the claims of Hempsch is raised for the first time
in the Reply Brief and is not in response to a new argument in the Answer.
Therefore, it is untimely and will not be considered. 37 C.F.R. § 41.41(c).

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The Examiner’s findings that Hempsch teaches an “imaging system
configured to monitor and regulate the robotic positioning of the ordered
item” is supported by the express teachings of Hempsch as discussed above.
Appellant’s arguments regarding prosecution of the Hempsch application do
not apprise us of error in these findings. 37 C.F.R. § 41.37(c)(1)(iv) (“The
arguments [in the Appeal Brief] shall explain why the examiner erred as to
each ground of rejection contested by appellant.”); In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011) (approving of Board’s practice of requiring
appellants to identify Examiner error in a rejection).
Accordingly, we sustain the rejection of claim 1 and claims 2–4, 13,
and 14, which fall therewith.
Claims 2 and 4
Rejected over Simms, Byers, and Hempsch
The Examiner relies on Hempsch to teach “wherein delivery includes
robotic positioning of the at least one ordered item in the driverless vehicle”
(claim 2) and wherein delivery includes robotic positioning of the ordered
item in the driverless vehicle and in the locked storage container (claim 4).
See Final Act. 21–23; Ans. 9; Appeal Br. 12.
Appellant argues that notwithstanding any disclosures by Byers and
Hempsch of the additional limitations of claims 2 and 4, the references fail
to cure deficiencies of Byers and Hempsch as to claim 1 from which claims
2 and 4 depend. Appeal Br. 12. We disagree. Hempsch’s teaching of an
imaging system that monitors and regulates the robotic positioning of the
ordered item inside the vehicle and into a locked storage container cures the
deficiencies of Byers discussed above for claim 1. See Hempsch ¶¶ 33, 36,
37, 59. Thus, we sustain the rejection of claims 2 and 4.
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Claim 7
Rejected over Simms, Byers, and Nusser
The Examiner’s reliance on Nusser to teach the features of claim 7
does not cure the above-noted deficiencies of Byers regarding claim 1 from
which claim 7 depends. See Final Act. 23; Ans. 9. Thus, we do not sustain
the rejection of claim 7.
Claims 10 and 11
Rejected over Simms, Byers, and Martenis
The Examiner’s reliance on Martenis to teach features of claims 10
and 11 does not cure the above-noted deficiencies of Byers as to claim 1
from which these claims depend. See Final Act. 24–25; Ans. 9; Appeal Br.
13. Thus, we do not sustain the rejection of claims 10 and 11.
Double Patenting of Claims 1, 3, 5, 6, 8, 9, and 12–14
over Claims 1 and 21 of Simms in view of Byers
The Examiner determines claims 1 and 14 are obvious modifications
to claims 1 and 21, respectively, of Simms in view of the teachings of Byers
of a robotic positioner associated with an imaging system that includes one
or more cameras and that is configured to monitor and regulate the robotic
positioning of an ordered item as claimed. Final Act. 26, 30; Ans. 9–10.
The Examiner has not shown that Byers teaches an imaging system
configured to monitor and regulate robotic positioning of the ordered item as
discussed for the § 103 rejection of claims 1 and 14. Thus, we do not sustain
the rejection of claims 1 and 14 for obviousness-type double patenting. Nor
do we sustain the rejection of claims, 3, 5, 6, 8, 9, 12, and 13, which depend
from claim 1, for obviousness-type double patenting.

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Double Patenting Rejection of Claims 1, 2, 4, 13, and 14
Over Claims 1 and 21 of Simms in view of Hempsch
The Examiner determines claims 1 and 14 are obvious modifications
of claims 1 and 21 of Simms and Hempsch’s teaching of an imaging system.
Final Act. 31, 33. Appellant argues that Hempsch does not teach or suggest
the claimed imaging system. Appeal Br. 13. We disagree for the reasons
discussed above for the § 103 rejection of these claims over Simms and
Hempsch. Thus, we sustain the rejection of claims 1 and 14 for obviousness
type double patenting. We also sustain the rejection of claims 2, 4, and 13,
which depend from claim 1 and are not argued separately.
Double Patenting of Claim 7
Over Claim 1 of Simms in view of Byers and Nusser
The Examiner determines that claim 7 is an obvious modification of
claim 1 of Simms in view of the teachings of Byers and Nusser. Final Act.
33–34. Appellant argues that Nusser does not cure the deficiency of Simms
and Byers in failing to render claim 1 obvious such that claim 7 dependent
therefrom is not unpatentable. Appeal Br. 14. We agree. Thus, we do not
sustain the rejection of claim 7 for obviousness-type double patenting.
Double Patenting of Claims 10 and 11
Over Claim 1 of Simms in view of Byers and Martenis
The Examiner determines claims 10 and 11 are obvious modifications
of claim 1 of Simms in view of Byers and Martenis. Final Act. 34–35. We
agree with Appellant that Martenis does not cure the deficiencies of Simms
and Byers in failing to render claim 1 obvious such that claims 10 and 11
dependent therefrom are not unpatentable. Appeal Br. 14–15. Thus, we do
not sustain the rejection of claims 10 and 11 for obviousness-type double
patenting.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 3, 5, 6, 8,
9, 12–14
103 Simms, Byers 1, 3, 5, 6, 8,
9, 12–14
1–4, 13, 14 103 Simms, Hempsch 1–4, 13, 14
2, 4 103 Simms, Byers,
Hempsch
2, 4
7 103 Simms, Byers,
Nusser
7
10, 11 103 Simms, Byers,
Martenis
10, 11
1, 3, 5, 6, 8,
9, 12–14
Nonstatutory
Double Patenting
Simms, Byers
1, 3, 5, 6, 8,
9, 12–14
1, 2, 4, 13,
14
Nonstatutory
Double Patenting
Simms, Hempsch
1, 2, 4, 13,
14

7 Nonstatutory
Double Patenting
Simms, Byers,
Nusser
7
10, 11 Nonstatutory
Double Patenting
Simms, Byers,
Martenis
10, 11
Overall
Outcome
1–4, 13, 14 5–12
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART