David Crane

Patent Trials and Appeals Board

Sep 1, 2021

2020006398 (P.T.A.B. Sep. 1, 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.
15/172,696 06/03/2016 David Crane 10484.3 6735
96605 7590 09/01/2021
Superior IP, PLLC
13032 S Crater Lake Circle
Riverton, UT 84065
EXAMINER
ELCHANTI, ZEINA
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/01/2021 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):
docketing@superiorip.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID CRANE1
____________

Appeal 2020-006398
Application 15/172,696
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL R. ZECHER, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
Final Rejection of claims 1–20 dated November 29, 2019. Appeal Br. 3.
We have jurisdiction under 35 U.S.C. § 6(b).

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies “David Crane,” the sole inventor, as the real party in interest.
Appeal Br. 3.

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SUMMARY OF DECISION
We Affirm.
THE INVENTION
Appellant states its invention relates to “[a] system for shipping
management.” Abstract, Title.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A system for shipping management, the system
comprising:
a shipping database configured to receive shipping
information from a user regarding a physical package;
an access point, the access point:
connected to the shipping database;
configured to receive the shipping information
from the shipping database;
configured to measure at least one attribute of the
physical package; and
configured to send the measured attribute to the
shipping database to be added to the shipping
information; and
including:
a scale, wherein the scale measures the weight of
the physical package with an accuracy of at least
approximately 0.01 pounds;
a size sensor, the size sensor configured to
measure at least one dimension of the physical package
with an accuracy of at least approximately 0.1 inches;
and
a communication module, wherein the
communication module is configured to:
send the shipping information to a shipping
provider; and
notify the shipping provider when the
package has been collected; and
a package drop, the package drop configured to:
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receive the shipping information from the
database;
accept the physical package from the user; and
store the physical package until pickup by a
shipping provider.
Appeal Br. 28–29 (Claims Appendix).

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Claims 1–10 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Abutbul (US 2016/0321600 A1, published Nov. 3, 2016)
in view of Whitehouse (US 2014/0279648 A1, published Sept. 18, 2014),
Sansone (US 6,567,008 B1, issued May 20, 2003), and Nuttall
(US 5,138,322, issued Aug. 11, 1992). Final Act. 7–14.
Claims 11 and 13–17 are rejected under 35 U.S.C. § 103 as being
unpatentable over Abutbul in view of Whitehouse, Fadden
(US 2002/0147648 A1, published Oct. 10, 2002), Sansone, Nuttall and
Robinson (US 2015/0106296 A1, published Apr. 16, 2015). Final Act. 15–
22.
Claims 18 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Abutbul in view of Whitehouse, Fadden, Sansone and
Nuttall. Final Act. 22–26.
Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over
Abutbul in view of Whitehouse, Fadden, Sansone, Nuttall and Robinson.
Final Act. 27.

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FINDINGS OF FACT
1. Figure 5 of Abutbul, reproduced below, shows item 30a with
delivery address 42 affixed to the top surface of the item.

Fig. 5 of Abutbul is shown above with delivery address 42 affixed to
the top surface of item 30a.

2. Figure 6 of Abutbul shown below is a fragmental view through
the wall of Figure 1 depicting a shipment terminal with a storage area
according to one embodiment of the invention.
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Figure 6 of Abutbul is shown above showing a shipment terminal with
a storage area.
3. Abutbul discloses, “FIG. 1 depicts a shipment terminal according to
one embodiment of the invention.” Abutbul ¶ 23.
4. Abutbul discloses:
Cell 102 includes a platform for placing therewithin an
item 30a, for delivery; a user interface 12, which may constitute
a touch screen, for inputting data, such as the delivery address
42; a conveyor 28 including a weight 104, for weighing item 30a,
such as displayed by numeral 34 in touch screen 12; and payment
means 104, for making the payment.
Id. ¶ 26.
5. Abutbul discloses “[a]t the third step, which is upon placing item
30a onto conveyor 28, each of scanners 32a, 32b, and 32c scans item 30a
from a different dimension, providing the data to a computer 90.” Id. ¶ 30.
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6. Abutbul discloses “[t]he self-service terminal (10) may further
include: . . . a packaging system (70) for packaging the item (30a, 30b).” Id.
¶¶ 64, 65.
7. Abutbul discloses, “[a]t the eleventh step, conveyor 28
transfers item 30a to a first exit 86a of conveyor 28 for placing it in a
delivery room 44.” Id. ¶ 47.
8. Abutbul discloses, “numeral 42 denotes the delivery address,
inputted by the user, and then used by the terminal; the delivery address is
for being printed on the packaging of the item and on the receipt.”
Id. ¶ 96.
9. Abutbul discloses, “numeral 34 denotes the item’s measured
weight; [and] numeral 36 denotes the computed price to be paid.” Id. ¶¶ 92,
93.
10. Abutbul discloses a user interface which receives currency. Id.
¶¶ 80–86.
11. Abutbul discloses, “a conveyor (28), for transferring the item (30a,
30b) from the platform (102) for delivery, upon making the payment.” Id.
¶ 63.
12. Abutbul discloses, “FIG. 6 depicts the removal of the shipped item
from the conveyor of FIG. 2 to a storage room.” Id. ¶ 46.

ANALYSIS
35 U.S.C. § 103 REJECTION
Appellant’s arguments against each of the rejections made under 35
U.S.C. § 103(a) are based on perceived deficiencies of Abutbul. The
Appellant, thus, argues claims 1–20 as a group based on the deficiencies of
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this single reference. We select claim 1 as the representative claim for this
group, and so the remaining claims stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv) (2015).
Preliminarily, we note that the Examiner construed claims 1–20 (Final
Act. 4–7) to recite 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth
paragraph recitations. The Examiner finds that “a communications module”
constitutes a § 112(f) recitation. We note that the Examiner applied Abutbul
only against claim elements, “an access point” and “a package drop.” (Final
Act. 8). While we agree with Appellant that “a communications module” is
a generic term that does not require a specific structure and, therefore,
invokes a means plus function interpretation, we disagree that 35 U.S.C.
112(f) applies to the claim terms “an access point” and “a package drop,”
each of which recites a specific structure in the “placeholder” to take the
phrase out of 35 U.S.C. § 112(f). Therefore, our discussion below of the
claim terms “an access point” and “a package drop,” against which Abutbul
was applied, is conducted without invoking 35 U.S.C. § 112(f).
Appellant argues that Abutbul is not a valid prior art reference based
on the decision in Dynamic Drinkware LLC v. National Graphics Inc., 800
F3d. 1375, 1380 (Fed. Cir. 2015), which requires at least one claim of the
published patent or published application to be supported by the disclosure
in the provisional. (Appeal Br. 22–26).
In response, the Examiner maintains that the USPTO’s “Dynamic
Memo” (available at https://www.uspto.gov/sites/default/files/documents/
dynamic_memo_05apr2018.pdf) is inapplicable because it only
clarifies that ‘(t)he date subject matter was ‘effectively filed’
under AIA 35 USC 102(d) for purposes of considering a ... U.S.
patent application publication ... as prior art under AIA 35 USC
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102(a)(2) is discussed in MPEP 2154.01 (b), and is not affected
by Dynamic Drinkware or Amgen and is not being modified by
this memorandum.’
(Final Act. 4).
We agree with the Examiner. We find that Abutbul is a valid prior art
reference in the obviousness rejections because it fulfills the ministerial
requirements of 35 U.S.C. § 102(d)(2)2,3, and Abutbul has an earlier
effective filing date.
Appellant argues that the “USPTO does not have authority to overrule
the [U.S. Court of Appeals for the] Federal Circuit via memo as noted in
pages 22-26 of the Appeal Brief.” (Reply Br. 6).
To the contrary, we consider the Dynamic Drinkware Memo not to
overrule, but only to distinguish the Dynamic Drinkware decision as
between the pre-AIA § 102(e) date situation, which was before PTAB (and
subsequently the Federal Circuit) in that case, and the post-AIA § 102(d)(2)
situation, which is what we have before us here. The memo also refers to
MPEP § 2154.01(b) which explicitly states that “there is no need to evaluate
whether any claim of a U.S. patent document is actually entitled to priority

2 35 U.S.C. § 102(d)(2) states that the claimed invention was described in a
patent issued under section 151, or in an application for patent published or
deemed published under section 122(b), in which the patent or application,
as the case may be, names another inventor and was effectively filed before
the effective filing date of the claimed invention.
3 MPEP § 2154.01(b) states a U.S. patent document “is entitled to claim”
priority to, or the benefit of, a prior-filed application if it fulfills the
ministerial requirements of: (1) containing a priority or benefit claim to the
prior-filed application; (2) being filed within the applicable filing period
requirement (copending with or within twelve months of the earlier filing, as
applicable); and (3) having a common inventor or being by the same
applicant.
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or benefit under 35 U.S.C. 119, 120, 121, 365, or 386 when applying such a
document as prior art.”
Appellant argues, “[t]he Abutbul application is disqualified as prior art
because the ‘527 application does not provide written description support for
the subject matter disclosed in the Abutbul application.” (Appeal Br. 15). In
support of its assertion, Appellant at length attempts an in-depth comparison
of the disclosure of ‘527 Provisional Application with the paragraphs of the
disclosure in Abutbul cited by the Examiner on page 15 in the Final
Rejection. (Appeal Br. 16–22).
It is well settled that if “the PTO wishes to utilize against an applicant
a part of that patent disclosure found in an application filed earlier than the
date of the application which became the patent, it must demonstrate that the
earlier-filed application contains . . . support for the invention claimed in the
reference patent.” In re Wertheim, 646 F.2d 527, 537 (CCPA 1981).
Applying this legal principle to this particular case, a correct comparison
would have been between the disclosure of the ‘527 Provisional Application
and the claims of Abutbul, and not between the disclosures of both
documents– as Appellant does in its Appeal Brief.
But, even assuming Appellant correctly made this comparison, the
attempt would still have been futile because Abutbul is a prior art reference
based on 35 U.S.C. §102(d)(2), which became effective in March 2013.
That is, there is no dispute that the application before us on appeal and
Abutbul are subject to the AIA, which became effective March 16, 2013.
Abutbul relies on the April 2015 filing data of the ‘527 Provisional
Application. The application on appeal has a filing date of June 2016 based
on its earliest filed provisional application 62/170,609. Thus, both
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applications’ filing dates are after the effective date of AIA, and Abutbul has
the earlier effective filing date.
Therefore, we find that Abutbul is a valid prior art reference.
We next construe disputed claim language as follows. Appellant’s
Specification does not specifically define the term “a physical package,” nor
does it utilize the term contrary to its ordinary and customary meaning.
Abutbul shows a suitcase or container (also referred to as “item[s] 30a, 30b”
(FF. 1, 2, 5, 6, 11)) being processed for shipping in cell 102 of the shipment
terminal (FF. 1–3). We, thus, construe the term “physical package” to
encompass such a suitcase or container.
Appellant argues,
Abutbul application is not referring to a shipping system.
Abutbul is, instead, teaching an automatic packaging system.
That is, a customer places an item to be shipped, the system
analyzes the item then packages the item (see, e.g., paragraph
33). The only time a package is referenced in Abutbul is as a
final product, not the process of receiving and or shipping said
package.
Appeal Br. 9.
We disagree with Appellant that the “Abutbul application is not
referring to a shipping system,” id., because Abutbul explicitly discloses:
“FIG. 1 depicts a shipment terminal according to one embodiment of the
invention.” ¶ 23 (FF 3). Abutbul further discloses, “numeral 42 denotes the
delivery address, inputted by the user, and then used by the terminal; the
delivery address is for being printed on the packaging of the item and on the
receipt.” ¶ 96 (FF 8). Abutbul also discloses, “numeral 34 denotes the
item’s measured weight” and “numeral 36 denotes the computed price to be
paid.” ¶¶ 92–93 (FF 9). Abutbul discloses a user interface which receives
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currency. ¶ 26 (FF. 4). Abutbul discloses, “transferring the item (30a, 30b)
from the platform (102) for delivery, upon making the payment.” ¶ 63
(emphasis added) (FF 11). Thus, one of ordinary skill in the art would have
understood that, because Abutbul discloses a system which accepts an item,
measures and prices it for shipping according to weight, affixes a shipping
address to it, and receives currency or credit card payment for delivery of the
item (FF 1–10), it discloses a shipping system.
Appellant argues:
Paragraph 109 does state ‘numeral 102 denotes a cell for
placing thereon an item for delivery[.]’ However, as used in
Abutbul the word ‘item’ does not denote a package, it denotes a
‘thing’ that is to be placed in a package by the system (see, e.g.,
paragraphs 33-35 of Abutbul. Thus, the ‘cell 102’ does not
receive a package, but instead receives an item. An ‘item’ to be
packaged is wholly different than a package to be shipped, as
discussed below.
(Appeal Br. 10–11).
We disagree with Appellant. First, we are not persuaded by
Appellant’s argument because, as we noted above, claim 1 makes no
distinction between an unwrapped package and one that is wrapped. In
addition, claim 1 is a system claim and Appellant attempts to distinguish its
claims from Abutbul by the item being worked on, but, “inclusion of the
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937, 940 (CCPA 1963).
Abutbul shows a suitcase or container being processed for shipping in
cell 102 of shipping terminal 10. (FF. 1–3) Again, as we explained above,
we construe the term “physical package” to encompass a suitcase or
container. Abutbul discloses “numeral 42 denotes the delivery address,
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inputted by the user, and then used by the terminal; the delivery address is
for being printed on the packaging of the item and on the receipt.” (FF 1, 8)
(emphasis added). Figure 5 of Abutbul shows delivery address 42 affixed to
the item 30a. (FF. 1). Thus, according to Abutbul, the rigid casing of item
30a itself constitutes the packaging as illustrated in Figures 5 and 6. (FF 1,
2).
Appellant argues,
The office action does not assert that any references other
than Abutbul teaches the storage area. The office action does
assert that paragraphs 63, 109, 111 and figure 3 do show a storage
area, but in fact none of these paragraphs do show a storage area.
Paragraph 63 states, in its entirety ‘a conveyor (28), for
transferring the item (30 a, 30 b) from the platform (102) for
delivery, upon making the payment.’ This says nothing about
storing a physical package, it only discusses moving a package
from one location to another. Presumably, the office action
leaves unstated why a conveyor system discloses ‘stor[ing] the
physical package until pickup by a shipping provider’ as required
in the claims because conveyor systems are not for storing items
but are for moving them. If [the] Examiner is reading a conveyor
system to mean a storage area, then the burden should be on [the]
Examiner to explain why one of skill in the art would be
motivated to use a conveyor system in a way that nobody actually
uses a conveyor system.
(Appeal Br. 11–12).
We disagree with Appellant. We again preliminarily look at the scope
of the claim limitation before us. Here, the pertinent part of claim 1 reads “a
package drop, the package drop configured to: . . . store the physical package
until pickup by a shipping provider.” The recitation of “until pickup by a
shipping provider,” is not a structural limitation, but a temporal use
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characteristic of space. We, thus, construe the limitation to mean, a package
drop configured to store the physical package.
Appellant again argues, that Abutbul does not store “a physical
package.” Id. But, as we set forth above, Appellant is attempting to
distinguish its structural claims from Abutbul by the item being worked
on—this argument is not persuasive for the reasons set forth above.
We find Abutbul explicitly discloses a storage room or area, i.e.,
“FIG. 6 depicts the removal of the shipped item from the conveyor of FIG. 2
to a storage room.” (Emphasis added) (FF 12, see also FF. 7, “delivery
room 44”). Even if we afforded weight to the language, “until pickup by a
shipping provider,” the language is functional, and as functional language,
we are required only to give the involved functional language weight to the
extent that the prior art is or is not capable of meeting the limitation. In re
Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir. 1997). We find that the
storage room shown in Figure 6 of Abutbul is capable of storing the items 30
a, b “until pickup by a shipping provider,” because as shown in Figure 6 (FF
2), the area is sufficiently large enough and partitioned by a wall to function
as a holding area until picked up.
Appellant next argues:
Paragraph 32 states, in its entirety: ‘At the fourth step,
computer 90 builds the data from scanners 32 a, 32 b, and 32 c
to a three-dimensional model 96 a of item 30 a.’ Appellant notes
that this [] is, again, referring to an automatic packaging system.
That is, a customer places an item to be shipped, the system
analyzes the item, packages the item, then turns the package over
to the shipping provider (see, e.g., paragraph 33). Because this
is an automatic packaging system, Abutbul is not concerned
about the final package dimensions, only the dimensions of the
item to be packaged (see, e.g., paragraph 30) so that an
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appropriate container can be selected (see, e.g., paragraphs 32-
33).
(Appeal Br. 13)
Appellant’s arguments fail from the outset because they are not based
on limitations appearing in the claims and are not commensurate with the
broader scope of claim 1 which merely recites “a physical package” and not,
“final package dimensions” as argued by Appellant. In re Self, 671 F.2d
1344, 1348 (CCPA 1982).
Notwithstanding, the Examiner found that
the packaging system recited in Abutbul is optional as recited in
para 64-65 ‘The self-service terminal (10) may further include: a
packaging system (70) for packaging the item.’ In addition, fig
5 and page 3 of the provisional application recite that stickers are
placed onto the item, which is then stored in the storage room.
Therefore, the system of Abutbul teaches a shipping system with
an access point as claimed in addition to a packaging system.
(Answer 3) (emphasis added).
We agree with the Examiner on this point too. We find that Abutbul’s
disclosure that “[t]he self-service terminal (10) may further include: a
packaging system” (emphasis added), is indicative that its shipping system is
operational without a packaging system. This is because the word, “may,”
connotes that something is possible, and not necessarily that it is. As we
found above, Figure 5 of Abutbul shows item 30a with delivery address 42
affixed to its outer surface. (FF. 1, 8). One reasonable interference to draw
from this finding is that affixing the shipping label to the outer surface of the
container provides the shipper with an indication where the container needs
to be shipped. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(In making the obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
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employ.”) Also, the disclosure of Abutbul’s provisional application
62/153,527 (“Provisional Application ‘527”) bears this out as well. In it,
nothing is mentioned about a packaging system; none is shown in any
drawing, nor is one discussed in that document. See e.g., Provisional
Application ‘527: Fig. 5, page 3, lines 8–16.
We thus affirm the obvious rejections, which all use Abutbul, for the
reasons given above.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1–20 under
35 U.S.C. § 103.
In Summary:
Claims
Rejected
35
U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 12 103 Abutbul,
Whitehouse,
Sansone, Nuttall
1–10, 12
11, 13–17 103 Abutbul,
Whitehouse,
Fadden, Sansone,
Nuttall, Robinson
11, 13–17
18, 19 103 Abutbul,
Whitehouse,
Fadden, Sansone,
Nuttall
18, 19
20 103 Abutbul,
Whitehouse,
Fadden, Sansone,
Nuttall, Robinson
20
Overall
Outcome
1–20
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DECISION
The decision of the Examiner to reject claims 1–20 is AFFIRMED.
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