Lievens, Daniel et al.Download PDFPatent Trials and Appeals BoardOct 9, 201914200328 - (D) (P.T.A.B. Oct. 9, 2019) Copy Citation 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. 14/200,328 03/07/2014 Daniel Lievens IPP201327906/258455 4109 143177 7590 10/09/2019 Shook, Hardy & Bacon L.L.P. (United Parcel Service, Inc.) 2555 Grand Blvd. Kansas City, MO 64108-2613 EXAMINER ZEROUAL, OMAR ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 10/09/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): IPDOCKET@SHB.COM IPRCDKT@SHB.COM docketing.shb@clarivate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte DANIEL LIEVENS, VINCENT DETHIER, LUC PIRENNE, and PETER HENDERICKX ________________ Appeal 2018-007766 Application 14/200,328 Technology Center 3600 ________________ Before HUNG H. BUI, SHARON FENICK, and RUSSELL E. CASS, Administrative Patent Judges. CASS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s non-final rejection of claims 1–22 and 24 under 35 U.S.C. § 101 and 35 U.S.C. § 103. Appeal Br. 7.2 Claims 1–22 and 24 constitute all the 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as United Parcel Service of America, Inc. Appeal Brief filed Feb. 20, 2018 (“Appeal Br.”) 3. 2 Rather than repeat the Examiner’s positions and Appellant’s arguments in their entirety, we refer to the above mentioned Appeal Brief, as well as the following documents for their respective details: the Non-Final Action mailed September 18, 2017 (“Non-Final Act.”) and the Examiner’s Answer mailed May 24, 2018 (“Ans.”). Appeal 2018-007766 Application 14/200,328 2 claims pending in this Application. Claim 23 has been cancelled. Id. at 49. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. BACKGROUND The present invention relates to a system and method for activating temporary delivery and pickup locations for parcels and other items for delivery to individuals. Abstract. Appellant’s Specification explains that an increase in Internet commerce has led to an increase in the number of parcels delivered to alternate delivery/pickup locations other than homes and workplaces. Spec. ¶ 2. According to the Specification, Appellant’s invention allows existing retail businesses to be used as a delivery/pickup location, such as a gas station, a convenience store, a retail location associated with a common carrier, or a retail department store. Id. ¶ 13. The delivery/pickup location may be manned for at least some time during the week and equipped with a computer system that can communicate with computing devices associated with a common carrier, the sender of a parcel, and the recipient of a parcel. Id. ¶ 14. Applicant’s Specification explains that the system may activate such temporary attended delivery/pickup locations by: (1) receiving information associated with an area where a temporary attended delivery-pickup location is desired; (2) receiving information associated with inactive temporary attended delivery/pickup locations; (3) from this information, determining that a particular inactive temporary attended delivery/pickup location is in the desired area; (4) transmitting a notification indicating that the particular inactive temporary attended delivery-pickup location is in the area; (5) receiving a request to activate the particular inactive temporary attended Appeal 2018-007766 Application 14/200,328 3 delivery/pickup location; and (6) activating the particular inactive temporary attended delivery/pickup location. Id. ¶ 20. Claim 1 is illustrative of the claimed subject matter at issue: 1. A computer system comprising: a logistics server having at least one processor, wherein the computer system is configured for: (A) receiving, at the logistics server, desired area information, wherein the desired area information comprises information associated with a particular area where at least one attended delivery/pickup location is desired, wherein the at least one attended delivery/pickup location has a representative that takes an action associated with delivery/pickup of a parcel; (B) receiving information associated with an inactive temporary particular attended delivery/pickup location that is a brick-and-mortar store associated with the logistics network wherein, the inactive temporary particular attended delivery/pickup location comprises a delivery/pickup location computer system adapted to communicate with the logistics server and the information associated with the inactive temporary particular attended delivery/pickup location comprises: i) a geographic location associated with the inactive temporary particular attended delivery/pickup location; and ii) an indication that the inactive temporary particular attended delivery/pickup location is inactive; (C) determining that the inactive temporary particular attended delivery/pickup location is located near the particular area based at least in part on the geographic location associated with the inactive temporary particular attended delivery/pickup location; Appeal 2018-007766 Application 14/200,328 4 (D) transmitting a notification to a client device, wherein the notification comprises: i) an indication that the inactive temporary particular attended delivery/pickup location is located near the desired area; and ii) an indication that the inactive temporary particular attended delivery/pickup location is inactive within the logistics network; (E) at least partially in response to transmitting the notification to the client device, receiving a request at the logistics server, from the client device, to activate the inactive temporary particular attended delivery/pickup location; (F) at least partially in response to receiving the request to activate the inactive temporary particular attended delivery/pickup location, activating of the inactive temporary particular attended delivery/pickup location within the logistics network, wherein activating the inactive temporary particular attended delivery/pickup location comprises transmitting one or more messages to the delivery location computer system and authorizing delivery of at least one the parcel to the active temporary particular attended delivery/pickup. Appeal Br. 42–43 (Claims Appendix). PRINCIPLES OF LAW I. SECTION 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract Appeal 2018-007766 Application 14/200,328 5 ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a Appeal 2018-007766 Application 14/200,328 6 mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept” sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. II. USPTO SECTION 101 GUIDANCE The United States Patent and Trademark Office (“USPTO”) recently published revised guidance on the application of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 Appeal 2018-007766 Application 14/200,328 7 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes) (referred to as Step 2A, prong 1 in the Guidance); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (referred to as Step 2A, prong 2 in the Guidance). See 2019 Guidance, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then move to Step 2B of the Guidance and look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See 2019 Guidance, 84 Fed. Reg. at 56. ANALYSIS I. THE SECTION 101 REJECTION A. The Examiner’s Rejection and Appellant’s Contentions In the Non-Final Office Action, the Examiner rejected claims 1–22 and 24 under 35 U.S.C. § 101. The Examiner determines that the claims are “directed to the abstract idea of determining a suitable attended delivery location and sending a message to activate the location in order to deliver a Appeal 2018-007766 Application 14/200,328 8 package to the location.” Non-Final Act. 7. According to the Examiner, this abstract idea “is described by the ‘receiving, determining, transmitting, and activating’ steps/functions of independent claim 1.” Id. The Examiner additionally determines that the claims do not “improve computer performance similar to Enfish, include rules that allow a computer to perform new functions similar to McRO, or include[] [a] non-generic arrangement of conventional and routine computer components similar to Bascom, and/or solve a computer or computer network problem with a computer solution similar to DDR.” Id. Finally, the Examiner determines that: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because logistics server, processor[,] computer system and client device (claim 1 and 12)[, and] computer processor (claim 19) as recited are a generic computer that performs functions (i.e. collect receive, process and transmit data) that are generic computer functions (i.e. receiving, processing and storing data, and receiving data over a network) that are well-understood, routine, and conventional activities previously known to the industry. Id. at 8. Appellant makes a number of arguments in response to the Examiner’s rejection. First, Appellant argues that the Examiner fails to sufficiently establish that the claims recite an abstract idea, and, therefore, fails to make out a prima facie rejection under Section 101. Appeal Br. 7– 9. Appellant next argues that claim 1 is patent-eligible because it “describe a specific method . . . for activating an inactive temporary attended pickup/delivery location.” Appeal Br. 12. Appellant further argues that the claims are patent eligible because they “allow a computer to perform new Appeal 2018-007766 Application 14/200,328 9 and improved functions.” Appeal Br. 17–18. Finally, Appellant argues that the claims contain an “inventive concept” and, thus, meet Alice Step 2B because it “present[s] a non-generic, ordered combination of components that allows the logistics server to activate an inactive attended delivery/pickup location” including a “logistics server,” “delivery/pickup location computer system” and a “client device.” Appeal Br. 19–21. B. Analysis under Step 2A, Prong 1, of the 2019 Guidance Under Step 2A, Prong 1, of the 2019 Guidance, we first must determine whether any judicial exception to patent eligibility is recited in the claim. The 2019 Guidance identifies three judicially excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. 2019 Guidance, 84 Fed. Reg. at 52–53. Based on existing Supreme Court and Federal Circuit precedent, the 2019 Guidance has identified “methods of organizing human activity” that may constitute a judicially excepted grouping, including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” See 2019 Guidance, 84 F3d. Reg. at 52. Here, claim 1 falls into the category of managing interactions between people, which is one of the categories of “organizing human activity” recognized by the 2019 Guidance. See id. at 52 n.13. In particular, claim 1 recites interactions between a logistics location (such as a parcel delivery Appeal 2018-007766 Application 14/200,328 10 service), a client (user), and an attended delivery/pickup location, that can traditionally be performed manually between people without the use of a computer. These specific interactions recited in the claim will be detailed below. First, the claim recites “receiving,” at a logistics location, “desired area information . . . associated with a particular area where at least one attended delivery/pickup location is desired.” Appeal Br. 42 (Claims Appendix). This action can be performed by having the individual client communicate desired area information to a person at the logistics location via telephone, by mail, or by having the client visit the logistics location in person. Next, the claim recites “receiving,” at the logistics location, “information associated with an inactive temporary particular attended delivery/pickup location” including “a geographic location associated with the inactive temporary particular attended delivery/pickup location” and “an indication that the inactive temporary particular attended delivery/pickup location is inactive.” Appeal Br. 42 (Claims Appendix). This action can be performed by having a person at an inactive attended delivery/pickup location telephone a person at the logistics location to provide the geographic location of the inactive delivery/pickup location, or by having a person at the logistics location receive a list of such locations. The claim next recites “determining,” at the logistics location, “that the inactive temporary particular attended delivery/pickup location is located near the particular area” desired. Appeal Br. 42 (Claims Appendix). This step can be performed by having a person at the logistics location compare the desired area received from the client with a list of available locations, Appeal 2018-007766 Application 14/200,328 11 which can be performed in the human mind or by a person using a pen and pencil. Next, the claim recites “transmitting a notification” to the client including “an indication that the inactive temporary particular attended delivery/pickup location is located near the desired area” and “an indication that the inactive temporary particular attended delivery/pickup location is inactive within the logistics network.” Appeal Br. 43 (Claims Appendix). This transmission can be carried out by having a person at the logistics location provide the specified information to the client via telephone, in person, or by sending the information to the client in the mail. Claim 1 next recites “receiving a request” at the logistics location from the client “to activate the inactive temporary particular attended delivery/pickup location.” Appeal Br. 43 (Claims Appendix). This step can be carried out via a communication from the client to the logistics location by telephone, in person, or in writing using the mail. Finally, claim 1 recites “activating of the inactive temporary particular attended delivery/pickup location within the logistics network.” Appeal Br. 43 (Claims Appendix). This action can be performed by having a person at the logistics location update their records in writing on paper and communicate (by phone or written communication) to a person at the particular attended delivery/pickup location that the location is now active. Because the claim limitations above all involve managing interactions that can traditionally be performed manually by humans without a computer, they qualify as methods of organizing human activity under the 2019 Guidance. See 2019 Guidance 84 Fed. Reg. at 52; Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) Appeal 2018-007766 Application 14/200,328 12 (holding that a computer-implemented method for “anonymous loan shopping” was a judicial exception because it could be “performed by humans without a computer”). For this reason, we are persuaded that claim 1 recites a judicial exception to patent-eligibility under 35 U.S.C. § 101. C. Analysis under Step 2A, Prong 2, of the 2019 Guidance Having determined that claim 1 recites a judicial exception, we next determine whether it recites “additional elements that integrate the [judicial] exception into a practical application.” See 2019 Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.05(a)–(c), (e)–(h). We agree with the Examiner that claim 1 does not recite sufficient additional elements that integrate the judicial exception into a practical application. See Non-Final Act. 7–8. Specifically, the structural computer elements in claim 1, including a “logistics server,” a “client device,” and a “delivery location computer system” are all generic components that are used to automate a process for managing pickup/delivery locations that can be performed manually by communications between individuals using traditional methods, such as the telephone, the mail, or face-to-face communication. It is well settled that “the mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention.” Alice 573 U.S. at 223. And, unlike Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), claim 1 is not directed to the improvement in the functioning of a computer but instead, as in Alice, “can readily be understood as simply adding conventional computer components to well-known business practices.” Enfish, 822 F.3d at 1338. Additionally, claim 1 is not directed to a solution that “is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” Appeal 2018-007766 Application 14/200,328 13 as in DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). Appellant argues that: (1) the Examiner “erred by not providing any reasoned rationale as to why the Examiner-identified concept is abstract based on a court-identified abstract idea” and (2) “the rejection is so uninformative that it prevents Appellant from recognizing and seeking to counter the grounds for rejection.” Appeal Br. 7–9 (emphasis omitted). We do not find these arguments persuasive. In particular, the Examiner identified the claim limitations that made up the judicial exception, including the relevant portions of the “receiving,” “determining,” “transmitting,” and “activating” steps in claim 1, and analogized those limitations to claims at issue in previous cases. See Non-Final Act. 7; Ans. 3–5. The Examiner also explained why the claim did not include additional elements that integrated the judicial exception into a practical application. See Non-Final Act. 8; Ans. Therefore, we find that the Examiner made out a prima facie case of unpatentability under § 101. Appellant next argues that claim 1 is patent-eligible because it “describe[s] a specific method . . . for activating an inactive temporary attended pickup/delivery location.” Appeal Br. 12. As discussed above, however, claim 1 recites the activation of an inactive temporary attended pickup location using steps that can traditionally be performed manually by interactions between people. These steps, therefore, amount to a judicial exception, and Appellant has not identified additional limitations in the claim that integrate this judicial exception into a practical application. Next, Appellant argues that, like the claims found patent-eligible in McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir. Appeal 2018-007766 Application 14/200,328 14 2016), claim 1 “allow[s] a computer to perform new and improved functions,” such as providing a “logistics server” that “is improved by the present claims because” it is “configured to ‘activate[] the inactive temporary particular attended delivery/pickup location within [a] logistics network.” Appeal Br. 17–18. We do not find this argument persuasive. Activating an inactive attended delivery/pickup location is not an improvement to computer technology like the improved computer animation system in McRO, which involved “a patentable, technological improvement over the existing, manual 3–D animation techniques” that used “limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” McRO, 837 F.3d at 1316. Rather, the activation of an inactive attended delivery/pickup location in claim 1 merely uses generic computers to automate interactions that can be performed by individual persons, without any particular technological improvement. Appellant has not demonstrated that the invention improves the functioning of the computer itself, as opposed to simply using a computer as a tool to increase the speed of communications that would traditionally be carried out by humans. D. Analysis under Step 2B Under Step 2B, we determine whether claim 1 includes additional elements individually or in combination that provide an “inventive concept” and, therefore, amount to significantly more than the exception itself. Here, Appellant has not demonstrated that claim 1 contains any such “inventive concept,” or that claim 1 adds any limitations beyond the judicial exception that are not “well-understood, routine, or conventional” in the field. See MPEP § 2106.05(d). Appeal 2018-007766 Application 14/200,328 15 Appellant argues that claim 1 meets Alice Step 2B because it “present[s] a non-generic, ordered combination of components that allows the logistics server to activate an inactive attended delivery/pickup location” including a “logistics server,” “delivery/pickup location computer system” and a “client device.” Appeal Br. 19–21. Appellant, however, has failed to establish that the “logistics server,” “delivery/pickup location computer system” and “client device” are anything other than generic computer equipment. Indeed, the Specification explains that “logistics server,” “delivery/pickup location computer system,” and “client device” may be implemented as “a desktop personal computer (PC), a tablet PC, a set-top box (STB), a Personal Digital Assistant (PDA), a cellular telephone, a web appliance, a server, a network router, a switch or bridge, or any other computer capable of executing a set of instructions (sequential or otherwise) that specify actions to be taken by that computer.” Spec. ¶¶ 31–32. Thus, claim 1 simply appends well-understood, routine, and conventional components previously known to the industry, specified at a high level of generality, to the judicial exception, which is insufficient to confer patent- eligibility. See 2019 Guidance, 84 Fed. Reg. at 56. Appellant attempts to analogize claim 1 to BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), but this argument is also unpersuasive. In BASCOM the claims at issue involved a “technology-based solution” that made a prior art filtering system more dynamic and efficient and, therefore, “improve[d] the performance of the computer system itself.” BASCOM, 827 F.3d at 1351. Claim 1, on the other hand, merely uses generic computers to automate interactions that can traditionally be performed between humans using standard forms of Appeal 2018-007766 Application 14/200,328 16 communication, such as the telephone, mail, and face-to-face communication. Appellant has not shown an improvement of the performance of the computer system itself. Consequently, we are not persuaded that the Examiner erred. We, therefore, sustain this rejection, as well as the rejection of claims 2–8, 10, 11, 19–22, and 24 as patent-ineligible, which Appellant does not argue separately. E. Claims 9 and 12. Appellant argues that claims 9 and 12 satisfy Alice Step 2B because they include a delivery/pickup location that is “a brick-and-mortar store that is not used as an attended delivery/pickup location unless activated.” Appeal Br. 20–21. According to Appellant, the use of “a brick-and-mortar store” makes the claim “entirely non-generic and non-conventional” because it “allows attended locations, such as gas stations, grocery stores, pharmacies, etc.[] that are not normally in the business of sending and receiving parcels, to temporarily function as an attended pickup/delivery location for the carrier.” Id. at 21. We do not find this argument persuasive. Locating multiple business services at a single location for the convenience of customers is a fundamental economic practice long prevalent in our system of commerce, and, therefore, is a judicial exception to patent-eligibility under § 101. See 2019 Guidance, 84 Fed. Reg. at 52; Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–79 (Fed. Cir. 2017) (holding that concept of ‘‘local processing of payments for remotely purchased goods’’ is a ‘‘fundamental economic practice, which Alice made clear is, without more, outside the patent system.”). Moreover, Appellant fails to demonstrate that Appeal 2018-007766 Application 14/200,328 17 this limitation is an “inventive concept” in light of existing business practices that would confer patent-eligibility on the judicial exception. We, therefore, sustain the rejection of claims 9 and 12 under 35 U.S.C. § 101. We also sustain the rejection of claims 13–18, which are dependent on claim 12 and which Appellant does not argue separately. II. THE SECTION 103 REJECTION A. Claim 1 In the Non-Final Office Action, the Examiner rejected claim 1 as unpatentable over Inomata (US 2002/0080030 A1; published June 27, 2002) in view of Rudduck (US 2012/0235786 A1; published Sept. 20, 2012), and Craig (US 2014/0081677 A1; published Mar. 20, 2014). The Examiner relies on Inomata as disclosing most of the limitations of the claim including, for example, a logistics server, receiving at the logistics server information associated with a particular area where at least one delivery/pickup area is desired, receiving information associated with an inactive temporary particular delivery/pickup location, determining that the inactive temporary particular delivery/pickup location is located near the particular area, transmitting a notification to a client device indicating that the inactive temporary particular delivery/pickup location is inactive and is located near the desired area, and activating the inactive temporary particular delivery/pickup location in response to a request to do so from the client device. Non-Final Act. 10–12 (citing Inomata ¶¶ 30–34, 58–60, 159–168). The Examiner relies on: (1) Rudduck to teach an attended delivery/pickup location with a representative that takes an action associated with the Appeal 2018-007766 Application 14/200,328 18 delivery/pickup of a parcel, and (2) Craig to teach that the brick-and-mortar building is also a brick-and-mortar store. Id. at 12–14. Appellant does not dispute the Examiner’s findings regarding Inomata. Instead, Appellant disputes the rationale to combine Inomata, Rudduck, and Craig, i.e., that one of ordinary skill would not have been motivated to combine Inomata and Craig in order to make the delivery/pickup location of Inomata a brick-and-mortar store. Appeal Br. 25–28. In this regard, Appellant argues that Inomata describes a locker system in which customers may electronically reserve an available locker box at a location with multiple individual lockers, while Craig teaches a self- service system for lodging establishment convenience stores to allow guests to pay for convenient shop items at a self-service terminal to avoid waiting in line at a front desk. Id. at 26. Appellant argues that combining Craig with Inomata would “render[] [Inomata] unsatisfactory for its intended purpose because multiple people would no longer be able to individually . . . secure [a] locker within the locker system.” Id. at 27. Appellant also argues that the combination would also “change the principle of operation of Inomata” because Inomata would no longer provide a person with secure storage of an item at a locker in a locker system. Id. at 27–28. Appellant further argues that Craig is non-analogous art, and that the Examiner has provided no factual motivation for combining Craig with Inomata. Id. at 33–35. The Examiner responds that the Appellant has misunderstood the way in which the references were combined. Ans. 12. In particular, the Examiner explains that Inomata did not disclose that the locker system is an attended locker system with a representative that takes actions associated with the delivery/pickup of parcels, so the Examiner combined Inomata with Appeal 2018-007766 Application 14/200,328 19 Rudduck, which disclosed a locker system that is located within a residential building that is attended by a front desk attendant who signs for and delivers packages to the locker system. Id. at 13 (citing Rudduck ¶¶ 106–08). The Examiner goes on to explain that while the combination of Inomata and Rudduck disclosed locker systems within brick-and-mortar buildings, it did not disclose that those brick-and-mortar buildings are stores. Thus, the Examiner relies on Craig to teach that the front desk attendant at a building can also be in charge of a convenience store within the building, and in such a case the brick-and-mortar location of the locker system (the lodging establishment) would also be a store. Id. at 13–14. Thus, the Examiner explains, Craig was used in the combination to show that the lodging establishment can also be a store by showing that the front desk attendant can also manage the store located within the building. Id. at 14. As a result, according to the Examiner, the references teach all of the elements of the claim, and that there is a motivation to combine those elements to achieve the claimed invention under KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Non-Final Act. 13–14. We find that the Examiner has established that the references teach all limitations of claim 1, and that a sufficient motivation exists to combine the references in order to arrive at the claimed invention. For example, we find that Inomata teaches the use of a locker system for delivery and pickup of parcels, and that this system allows the locker to be located at the user’s desired place, such as a place near the user’s office. Inomata ¶ 10. We also find that Rudduck teaches that lockers can be located at a lodging establishment with an attendant and that Craig teaches that a lodging establishment can also include a convenience store with an attendant. Appeal 2018-007766 Application 14/200,328 20 Rudduck ¶¶ 106–108. We further find that one of ordinary skill who was interested in setting up a business of making lockers available at locations convenient to individuals would have been motivated to combine the references at the time of the claimed invention. Such a person would have understood that the lockers of Inomata could be located in many different types of locations, and, thus, would have been motivated to consider other locations where lockers have been located, such as the lodging establishments of Rudduck. One of ordinary skill would also have been interested in the types of businesses and services that could be offered at a lodging establishment along with the lockers, and thus would have been motivated to include a convenience store at the lodging establishment, as taught by Craig. We also find unpersuasive Appellant’s arguments that: (1) combining Craig with Inomata would “render[] [Inomata] unsatisfactory for its intended purpose because multiple people would no longer be able to individually . . . secure [a] locker within the locker system” and (2) the combination would “change the principle of operation of Inomata” because Inomata would no longer provide a person with secure storage of an item at a locker in a locker system. Id. at 27–28. Appellant has not pointed to any disclosure in Craig that would prevent multiple people from being able to individually secure a locker within the locker system of Inomata, or that would interfere with secure storage of an item in a locker in Inomata. Finally, we disagree with Appellant’s contention that Craig is non- analogous art. A prior art reference is considered analogous if the reference is “reasonably pertinent to the particular problem with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011). Appellant’s Appeal 2018-007766 Application 14/200,328 21 Specification discloses that the inventors were seeking to solve problems caused by an increasing number of parcels being delivered to alternate delivery/pickup locations, some of which may not be convenient or suitable. Spec. ¶ 2. Craig, especially when considered in light of Inomata and Rudduck, is reasonably pertinent to this problem because a lodging establishment with a convenience store may be a suitable and efficient location for lockers due to the fact that an attendant at the lodging establishment can also oversee both the delivery and pickup of packages to and from the lockers and the operations associated with the convenience store. Therefore, we believe the Examiner’s use of Craig in the rejection at issue was appropriate. Accordingly, we sustain the Examiner’s rejection of claim 1 under § 103, and also sustain the rejection of claims 2–11 and 24, which are dependent on claim 1 and are not argued separately. B. Claims 12 and 19 Appellant argues that the Examiner erred in rejecting claims 12 and 19 because the prior art does not teach or suggest “a brick-and-mortar store that is not used as an attended delivery/pickup location unless activated for delivery of a parcel.” Appeal Br. 30–33. Appellant argues that Inomata does not teach this limitation because it “describes a group of locker boxes at a locker box system that would have some lockers reserved, while others are not reserved.” Id. at 31. We do not find this argument persuasive. When the locker system of Inomata is first installed in a brick-and-mortar location that also has other uses (or when none of the lockers are in use), the brick-and-mortar location is not being used as an attended delivery/pickup location. We, therefore, Appeal 2018-007766 Application 14/200,328 22 sustain the Examiner’s rejection of claims 12 and 19 under § 103, and also sustain the rejection of claims 13–15 and 20–22, which are dependent on claim 12 or 19 and are not argued separately. C. Claim 16 Claim 16 recites that “the request to activate the particular inactive attended delivery/pickup location comprises an indication that the particular inactive attended delivery/pickup location will be staffed by at least one staff member associated with the particular event during at least a portion of the event.” Appeal Br. 47 (Claims Appendix). The Examiner relies on Shakes (US 2014/0052661 A1; published Feb. 20, 2014) for this limitation. The Examiner determines that Shakes discloses a delivery system in which the user sends a request to activate a temporary delivery location where a user can pick up an item, which is then staffed for the necessary time requested by the user to allow the user to pick up the item. Ans. 16. The Examiner also interprets the request to activate the temporary pickup location by the user as an indication that the temporary pickup location needs to be staffed. Id. Appellant argues that Shakes “provides no teaching or suggestion that the agent may be associated with the temporary pickup location,” but instead “only describes that the agent may be at the location at the specified time to allow customers to retrieve items” and “provides no suggestion that there may be any crossover of resources between the temporary location and the carrier—only that the carrier may utilize the location.” Appeal Br. 39–40. We do not find Appellant’s argument persuasive. Appellant has not pointed to anything in the claim language that requires a “crossover of resources” between the temporary location and a carrier. Moreover, we Appeal 2018-007766 Application 14/200,328 23 agree with the Examiner that Shakes fairly discloses this limitation. Shakes discloses that “a temporary pickup location is a physical location at which an agent, carrier or other individual is located for a predefined timeframe . . . to allow for customers to retrieve ordered items” and that the “agent will be available at the temporary pickup location to allow the customer to retrieve the item, sign and/or pay for the item.” Shakes ¶ 13. The fact that the agent is available to allow a customer to retrieve, sign, and pay for the item indicates that the agent has some association with the carrier because the agent is taking responsibility for ensuring that the item is being picked up by the correct customer. We, therefore, sustain the Examiner’s rejection of claim 16. D. Claim 17 Claim 17 recites that “the particular inactive attended delivery/pickup location comprises a business, wherein the business is not primarily for receiving one or more parcels.” Appeal Br. 47 (Claims Appendix). The Examiner relies on Lee (US 2005/0068178 A1; published Mar. 31, 2005) for this limitation, finding that Lee discloses lockers located in lodging establishments or community centers. Non-Final Act. 20. Appellant argues that Lee fails to teach this limitation because “[p]lacing the locker box within a building does not teach that the building becomes an active/inactive attended delivery/pickup location because, as the Examiner interprets the references, it is still Lee’s locker system that is active or inactive—not the building.” Appeal Br. 36. We are not persuaded by Appellant’s argument. Claim 17 does not require that the building itself be active or inactive, but merely that the attended delivery/pickup location comprises a business that “is not primarily Appeal 2018-007766 Application 14/200,328 24 for receiving one or more parcels.” Lee teaches locating a temporary delivery/pickup system in a “transfer facility” including a “locker system” that can be at the same location as a business that is not primarily for receiving one or more parcels, such as an apartment complex or a “merchant’s premises.” Lee ¶ 21. We, therefore, sustain the Examiner’s rejection of claim 17, and of claim 18, which is dependent on claim 17 and not separately argued. CONCLUSION We affirm the Examiner’s rejection of claims 1–22 and 24 under 35 U.S.C. § 101 and under 35 U.S.C. § 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2018-007766 Application 14/200,328 25 In summary: Claims Rejected Basis Affirmed Reversed 1–22, 24 § 101 1–22, 24 1–3, 12, 13, 24 § 103 Inomata, Rudduck, Craig 1–3, 12, 13, 24 14, 17–19, 22 § 103 Inomata, Rudduck, Craig, Lee 14, 17–19, 22 4–8 § 103 Inomata, Rudduck, Craig, Shakes 4–8 10, 11 § 103 Inomata, Rudduck, Craig, Shakes, Klingenberg 10, 11 15, 16 § 103 Inomata, Rudduck, Craig, Lee, Shakes 15, 16, 20, 21 9 § 103 Inomata, Rudduck, Craig, Shakes, Terada 9 Overall Outcome 1–22, 24 AFFIRMED Copy with citationCopy as parenthetical citation