Ex Parte Nakajima et al

Board of Patent Appeals and Interferences

Sep 20, 2007

10223408 (B.P.A.I. Sep. 20, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AMANE NAKAJIMA, HIROSHI KURAHASHI,
and YOSHIHIKO OHTA
____________

Appeal 2007-2110
Application 10/223,408
Technology Center 3600
____________

Decided: September 20, 2007
____________

Before HUBER C. LORIN, LINDA E. HORNER and ANTON W. FETTING,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-19 and 21-26, all the claims currently pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellants claimed invention is directed to a method and system for
delivering and receiving a purchased article (Specification 1:4-5). Claims 1 and 7,
reproduced below, are representative of the subject matter on appeal.
1. In a system for performing electronic commerce involving an
article over a network and managing a locker for delivery and receipt of the
article, an article delivery method comprising the steps of:
receiving an order for the article over said network and setting and
storing receipt identification information used to open said locker, said
receipt identification information identifying a recipient of said article;
receiving a specification of said locker to which said article is to be
delivered;
outputting delivery request data including article identification
information identifying said article and locker information indicating said
locker;
setting a locking password with a password management module
when said article delivered to said locker is placed in said locker;
outputting said locker identification information and said article
identification information with a delivery information issuance module; and
after the article is delivered to the locker, sensing a physical parameter
of the article to determine whether an article has been delivered and issuing
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an alarm if no article is sensed, and unlocking said locker containing said
delivered article based on said delivery request data in response to
acceptance of said receipt identification information.

7. An article delivery system, comprising:
a receipt setting receiving module for receiving specification of a
locker to which an article is to be delivered;
a computer device for registering a receipt password used by a
recipient of said article to open said locker and a delivery password used by
a deliverer of the article to open said locker, said computer device further
setting a locking password when said article delivered to said locker is
placed in said locker;
a delivery information issuance module for outputting a locker
identification information and an article identification information;
an entry monitoring module for locking said locker when said delivery
password is input and said article is placed in said locker; and
a retrieval monitoring module for unlocking said locker containing
said article when said receipt password is input.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Hall US 6,131,399 Oct. 17, 2000
Stephens US 6,323,782 B1 Nov. 27, 2001
Ogilvie US 6,344,796 B1 Feb. 5, 2002
Kakuta US 6,456,900 B1 Sep. 24, 2002
Maloney US 6,707,381 B1 Mar. 16, 2004
Moreno US 6,882,269 B2 Apr. 19, 2005
The following rejections are before us for review.
1. Claims 1-6 and 21-23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moreno, Maloney, and Ogilvie.
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2. Claims 7-10 and 12-14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moreno and Ogilvie.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moreno, Ogilvie, and Hall.
4. Claims 15-18 and 24-26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Moreno, Ogilvie, and Stephens.
5. Claim 19 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Moreno, Ogilvie, Stephens, and Kakuta.

ISSUES
Appellants contend that (1) “there is no teaching or suggestion in
MORENO, or any other document of record, of receiving a specification of the
locker to which the article is to be delivered” (Appeal Br. 12), and (2) the applied
combination fails to disclose or suggest sensing a physical parameter of an article
to determine whether the article has been delivered because “MALONEY teaches
identifying the articles, not determining the presence of the article, since the article
is returned when the measured weight is contrary to the expected weight” (Appeal
Br. 15). The Examiner held that it would have been obvious to one of ordinary
skill in the art to incorporate the teachings of Maloney into the invention of
Moreno “in order to ensure that a proper quantity of goods had been placed in the
storage cabinet, as taught by Maloney” (Answer 6).
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The issues before us are:
1. Whether Appellants have shown that the Examiner erred in rejecting
claims 1-6 and 21-23 as unpatentable over Moreno, Maloney, and Ogilvie.
2. Whether Appellants have shown that the Examiner erred in rejecting
claims 7-10 and 12-14 as unpatentable over Moreno and Ogilvie.
3. Whether Appellants have shown that the Examiner erred in rejecting
claim 11 as unpatentable over Moreno, Ogilvie, and Hall.
4. Whether Appellants have shown that the Examiner erred in rejecting
claims 15-18 and 24-26 as unpatentable over Moreno, Ogilvie, and Stephens.
5. Whether Appellants have shown that the Examiner erred in rejecting
claim 19 as unpatentable over Moreno, Ogilvie, Stephens, and Kakuta.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427,
7 USPQ2d 1152, 1156 (Fed. Cir. 1988) (explaining the general evidentiary
standard for proceedings before the Office).
1. A customary and ordinary meaning of the term “specification” is a
restricting or modifying element. Common synonyms are condition, provision,
qualification, reservation, stipulation, and term. Roget’s II The New Thesaurus 938
(3rd ed. 1995).
2. Appellants’ Specification does not define the term specification nor
does it utilize it contrary to its ordinary meaning.
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3. Moreno discloses a system and method that allows a customer to
request delivery of goods from a vender, and coordinates the delivery of these
goods to a secure locker from which the goods can be retrieved by the customer
(Moreno, col. 1, ll. 12-15).
4. Vendors, delivery services, and customers are allowed to reserve
lockers in advance, from a remote location, for example via a wireless
communications device. By reserving the lockers, vendors and deliverers are
assured that a receptacle for delivering or receiving an order will be available on a
specific date, at a specific time, thereby eliminating the need to return to a location
because of a missed delivery (Moreno, col. 2, ll. 53-61).
5. The lockers 120 are connected to a controller 116, which via a server
102, controls the operation of and access to the lockers 120 (Moreno, col. 3, ll. 63-
65).
6. The controller 116 receives inputs/signals from a user verification
device 114 that are utilized to determine to whom, when, and where access to a
locker 120 is to be provided (Moreno, col. 3, l. 66 to col. 4, l. 3).
7. The system 100 permits any number, size, shape and type of locker to
be utilized. The determination as to which locker to provide in a given application
of the system 100 is based upon specific needs and wants (Moreno, col. 4, ll. 28-
32).
8. The locker 120 may include any security feature or function desired to
efficiently and securely store delivered goods. Such security features and
functions may includes, but are not limited to, providing public and secure access
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points to the interior of a locker, providing alarm and monitoring functions,
providing locking mechanisms, and any other specialized security features and
functions which may be desired based upon the characteristics of goods to be
stored in the locker, the location of the locker, the time of day, the frequency of use
of the locker, or any other variable (Moreno, col. 5, ll. 11-20).
9. Another example of a security feature supported by the lockers 120 is
the use of remotely or automatically controlled locks 118 (Moreno, col. 5, ll. 33-
35).
10. A customer may access a locker 120, upon entry of the appropriate
access code (Moreno, col. 6, ll. 66-67).
11. The system may also be configured to monitor and/or control
environmental conditions, safety and security features, and perform other
functions. For example, the storage unit 200 may be equipped with fire
suppression systems, fire alarms, smoke detectors, video monitors (for example,
web cameras), and/or burglar or intrusion alarms (Moreno, col. 7, ll. 59-65).
12. Fig. 4 illustrates a process by which a customer may utilize the system
according to an embodiment of Moreno. The process begins when a customer
registers with a service provider and obtains a password, username and access code
(Block 402) (Moreno, col. 12, ll. 27-31).
13. Once the customer has registered with the service provider, the
process continues with the customer placing an order with the service provider
(Block 404) (Moreno, col. 12, ll. 44-46).
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14. When the order is for pick-up, the process continues with the service
provider determining which locker(s) is available for the customer’s needs i.e., the
service provider assigns a locker to the client (Block 408). The system supports
dynamic locker allocations such that locker allocations may occur at the time of
order placement, at the time of delivery, or at any other time (Moreno, col. 12, ll.
57-62 and Fig. 4).
15. The service provider then directs the controller or kiosk to
open/unlock the designated locker upon receiving the customer’s access code
(Moreno, col. 12, ll. 65-67).
16. Upon aggregating orders, the service provider notifies the customer,
vendor, and/or carrier of the delivery/pick-up schedule (Block 416) (Moreno, col.
13, ll. 59-61).
17. Upon arriving at the storage unit, the carrier appropriately provides
the designated tracking code, access code, or other required verification (Block
418) (Moreno, col. 12, l. 66 to col. 13, l. 1).
18. When the code/verification input by the carrier is correct, the process
continues with the locker being unlocked and the carrier delivering or picking-up
the desired goods and closing the locker (Block 424) (Moreno, col. 14, ll. 16-19).
19. According to another exemplary embodiment, a customer first places
an order with a vendor, for example, Grocery123.com, and specifies a preferred
delivery time. The vendor then processes the order to determine the order size,
locker requirements, and an estimated delivery time. This information is then
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transmitted to the service provider, for example, ShopperBox to reserve the
required lockers (Moreno, col. 14, l. 66 to col. 15, l. 8).
20. Based on the received information, ShopperBox servers assign a
specific locker(s) to the order, generate a delivery PIN number and provide the
information to the vendor and locker controller/kiosk (Moreno, col. 15, ll. 10-22).
21. The locker controller/kiosk sets the access code, i.e., the received
delivery PIN, for the designated locker(s) and initiates any specified environmental
conditions (Moreno, col. 15, ll. 22-26).
22. After the ordered items have been placed in the assigned locker(s), the
locker controller/kiosk sends notification to the ShopperBox servers that delivery
has been made (Moreno, col. 15, ll. 30-33).
23. The ShopperBox servers then set the access PIN number for the
locker(s) to the customer’s PIN number by transmitting the information to the
locker controller/kiosk (Moreno, col. 15, ll. 36-37).
24. Maloney discloses a system and method for tracking, controlling,
identifying, verifying, and dispensing items, for example, narcotics, from a locker
or storage cabinet (Maloney, col. 1, ll. 12-16, and Fig. 1).
25. The storage cabinet includes a portal for receiving and dispensing
containers that contain the tracked objects (Maloney, col. 3, ll. 19-21).
26. A container retrieval system in the cabinet is provided for retrieving a
requested container from its bin and delivering it to the portal for retrieval by an
authorized user. The retrieval system also moves a checked-in container from the
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portal, into which it is inserted when checked in, to a designated bin for storage
(Maloney, col. 3, ll. 26-31).
27. The storage cabinet also includes elements, for example a scale, for
verifying that the correct object is actually contained within its designated
container, both when the object is checked out and when it is checked back in
(Maloney, col. 4, ll. 1-6).
28. The control computer reads the weight of the container and its
contents from the scale for object identification and verification processing
(Maloney, col. 8, ll. 60-62).
29. If the weight matches the expected weight, then the control computer
verifies that the correct objects are contained within the container and either
dispenses the container to the user or stores it in a designated bin. If a discrepancy
is noted, the proper alarms are set and appropriate action, such as reporting to
security personnel, is taken (Maloney, col. 4, ll. 14-21).
30. Ogilvie discloses an unattended package delivery cross-docking
apparatus having a plurality of storage devices, each having a door with a lock that
is locked and unlocked in response to codes (Ogilvie, col. 1, ll. 62-65).
31. A local lock controller is associated with each of the storage devices
and includes an input device for inputting an access code that unlocks the lock
when it is locked and a transaction code that locks the lock when it is unlocked
(Ogilvie, col. 1, l. 65 to col. 2, l. 2).
32. A central operations controller in communication with the local lock
controllers is programmed to receive the access and transaction codes input to each
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local lock controller, to create as access code for the lock of each storage device
upon receiving a transaction code that locks the lock, and to output a notice of the
access code to be used to unlock the lock of each storage device when it is locked
(Ogilvie, col. 2, ll. 2-8).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences between the
subject matter sought to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the invention was made to a
person having ordinary skill in the art to which said subject matter pertains.’” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007).
The question of obviousness is resolved on the basis of underlying factual
determinations including (1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, and (3) the level
of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). See also KSR, 127 S.Ct. at 1734, 82 USPQ2d at 1391 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”) The Court in
Graham further noted that evidence of secondary considerations “might be utilized
to give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18, 148 USPQ at 467.
In KSR, the Supreme Court emphasized “the need for caution in granting a
patent based on the combination of elements found in the prior art,” id. at 1739, 82
USPQ2d at 1395, and discussed circumstances in which a patent might be
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determined to be obvious. In particular, the Supreme Court emphasized that “the
principles laid down in Graham reaffirmed the ‘functional approach’ of Hotchkiss,
11 How. 248.” KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham, 383
U.S. at 12, 148 USPQ at 464 (emphasis added)), and reaffirmed principles based
on its precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” Id. The Court explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations
of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable
variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” Id.
The Supreme Court stated that “[f]ollowing these principles may be more
difficult in other cases than it is here because the claimed subject matter may
involve more than the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement.” Id. The Court explained,
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects of
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demands known to the design community or present in
the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all
in order to determine whether there was an apparent
reason to combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41, 82 USPQ2d at 1396. The Court noted that “[t]o facilitate review,
this analysis should be made explicit.” Id. (citing In re Kahn, 441 F.3d 977, 988,
78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”)). However, “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” Id.

ANALYSIS
Rejection of Claims 1-6 and 21-23 as unpatentable over Moreno, Maloney, and
Ogilvie
Appellants argue claims 1-6 and 21-23 as a group (Appeal Br. 12-20).
Although Appellants list the elements of dependent claims 2-6 and 21-23 on pages
16-20 of the Brief, Appellants do not provide any argument as to why the cited art
does not teach or suggest the listed elements. In particular, Appellants fail to
specifically rebut the Examiner’s findings of fact as to the scope and content of the
prior art and the determination of obviousness of the claimed subject matter. A
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statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(vii) (2006).
As such, we select claim 1 as the representative claim and the remaining claims 2-6
and 21-23 stand or fall together with claim 1.
Appellants contend that “there is no teaching or suggestion in MORENO, or
any other document of record, of receiving a specification of the locker to which
the article is to be delivered” (Appeal Br. 12). More specifically, Appellants
contend that Moreno fails to disclose receiving a specification of the locker to
which the article is to be delivered because Moreno “merely discloses assigning a
locker to a potential delivery” (Appeal Br. 13). We disagree.
In order to determine the patentability of claim 1 over the cited prior art, the
claim must be interpreted to ascertain its proper scope and/or meaning. In
interpreting claim language, we apply the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of ordinary skill
in the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description. See In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997). See also In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). We decline to
unnecessarily import examples from the Specification into the claims. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875, 69 USPQ2d
1865, 1868 (Fed. Cir. 2004) (“Though understanding the claim language may be
aided by explanations contained in the written description, it is important not to
import into a claim limitations that are not part of the claim. For example, a
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particular embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”) It is Appellant’s
burden to precisely define the invention. See In re Morris, 127 F.3d 1048, 1056,
44 USPQ2d 1023, 1029 (Fed. Cir. 1997).
Claim 1 recites an article delivery method that includes, inter alia, receiving
a specification of said locker to which said article is to be delivered, and outputting
delivery request data including article identification information identifying said
article and locker information indicating said locker. Appellants’ Specification
does not define the term “specification” (Finding of Fact 2). The customary and
ordinary meaning of the term “specification” is a restricting or modifying element,
in other words, a condition, provision, or stipulation (Finding of Fact 1).
Therefore, we find, using the customary meaning of the term specification, the
broadest reasonable interpretation of the “receiving a specification…” step of
claim 1 requires only that some information indicating a requirement or provision
of the locker, for example, a location, size, or need for refrigeration, need be
received. This interpretation is consistent with Appellants’ Specification which
describes a customer specifying an area and place in which the locker is installed
where he/she wants to receive the article and the commerce server receiving this
information about the locker and querying the locker management server about
availability of lockers (Specification 12-13).
As noted by Appellants, column 15, lines 5-8 of Moreno discloses “that once
the order size, locker requirements and estimated time of delivery are determined
by the vendor (Grocery123.com), the information is forwarded to the service
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provider (ShopperBox) to reserve in the database the lockers needed for the order”
(Appeal Br. 12-13) (Finding of Fact 19). Therefore, Moreno discloses receiving a
specification of the locker as claimed for at least the reason that Moreno discloses
the service provider receives the locker requirements.
In rejecting claim 1, the Examiner found that Moreno discloses receiving a
specification of the locker to which the article is to be delivered in as much as
Moreno discloses “that the system allows a user to reserve a locker for delivery of
an article” (Answer 19). The Examiner found that “in receiving the user’s
reservation, the system is receiving a specification of the locker to which the article
is to be delivered” Id. In response, Appellants argue that “while a number of
lockers can be reserved for pick-up, there is no disclosure of a specification of a
locker to which the article is to be delivered” (Reply Br. 3). Appellants further
contend that Moreno discloses “reserving a number of lockers, but, as it is
uncertain into which of the reserved lockers the article will fit, a specific locker is
not specified/identified until after it has been placed in the locker” Id. Again, we
disagree.
Although portions of Moreno may, arguendo, disclose an embodiment
wherein a specific locker is not assigned until delivery of the article, it still remains
that Moreno specifically discloses that the system supports dynamic locker
allocations such that allocation of a locker may occur at the time of order
placement (Finding of Fact 14). Furthermore, Fig. 4 of Moreno clearly discloses
that the service provider assigns a locker to the client (Block 408) and that a
delivery person places the ordered item in the assigned locker after entering an
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access code (Blocks 418 and 424) (Finding of Fact 14 and 18). Accordingly, the
delivery person has to receive information identifying the assigned locker in order
to place the article therein (Finding of Fact 16-18). As such, we find Appellants’
argument regarding receiving a specification of the locker unpersuasive.
Appellants further contend that Moreno “fails to teach or suggest outputting
delivery request data including article identification information identifying said
article and locker information indicating said locker” because Moreno “merely
assigns or allocates the lockers” (Appeal Br. 13). Moreno discloses that the service
provider assigns/reserves the locker(s) which meet the customer’s requirements
and determines a resident PIN number for accessing the assigned lockers (Finding
of Fact 20). Then the service provider provides this information to the kiosk or
controller associated with the lockers (Finding of Fact 20). The kiosk or controller
receives the PIN number and sets the entry number for access to the assigned
lockers, i.e., 12, 21, and 23 (Finding of Fact 21). Accordingly, Moreno discloses
outputting locker information indicating said locker as claimed.
Appellants further contend that Maloney fails to overcome Moreno’s failure
to teach or suggest sensing a physical parameter of the article as recited in claim 1
because the Examiner failed to “provide a reason why one of ordinary skill in the
art would have found it obvious to modify” Moreno in view of Maloney (Appeal
Br. 14). More specifically, Appellants contend that a proper combination of
Moreno and Maloney requires “motivation or rationale to modify MORENO to
include a weighing device to confirm the weight of the delivered goods” (Appeal
Br. 15). We agree, as discussed infra, in order to support a rejection based on
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obviousness, there must some be “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006). However, we disagree
with Appellants’ contention that the Examiner has failed to provide a reason why a
modification of Moreno would have been obvious in view of Maloney.
In rejecting claim 1, the Examiner held that it would have been obvious to
one having ordinary skill in the art, at the time the invention was made, “to
incorporate the teachings of Maloney into the invention of Moreno…in order to
ensure that a proper quantity of goods had been placed in the storage cabinet, as
taught by Maloney” (Answer 6). We find that the Examiner has established the
proper rationale for combining Moreno and Maloney. Both Moreno and Maloney
are directed to lockers for securely storing articles to be delivered or dispensed
(Findings of Fact 3, 24). Moreno clearly discloses that any number, size, shape,
and type of locker may be utilized (Finding of Fact 7). Maloney discloses a
storage cabinet for securely dispensing small articles, e.g., drugs, which require
added security (Finding of Fact 24). Therefore, the combination of Moreno and
Maloney is merely the substitution of one storage cabinet for another. As such, we
find the Examiner’s holding that it would have been obvious to utilize the
teachings of Maloney, for example, the use of a scale or camera to inspect the
articles at the time of delivery or pick-up, in the system of Moreno in order to
ensure that a proper quantity of goods had been placed in the storage cabinet,
sufficient to support the legal conclusion of obviousness.
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Appellants also contend that Maloney fails to overcome Moreno’s failure to
teach or suggest sensing a physical parameter of the article as recited in claim 1
because Maloney “teaches identifying the articles, not determining the presence of
the article, since the article is returned when the measured weight is contrary to the
expected weight” (Appeal Br. 15). We disagree.
Maloney teaches verifying, using for example a scale, that the correct object
is actually contained within the designated container, both when the object is
checked out and when it is checked back in (Finding of Fact 27). If a discrepancy
is noted between the measured weight and expected weight of an article, then
alarms are triggered and appropriate action is taken, for example, reporting it to
security personnel (Finding of Fact 29). Accordingly, if there is no article present,
there is necessarily a discrepancy in the measured weight and the expected weight
resulting in an appropriate action. As a result, the system of Maloney is able to
determine not only if an article is present, but also if the article is the expected
article. The fact that the system of Maloney is capable of identifying objects, does
not change the fact that it is also capable of detecting the presence, or lack thereof,
of an article. As such, we find Appellants’ argument unpersuasive.
Finally, Appellants contend “it would not have been obvious to one
ordinarily skilled in the art to utilize the alarm of OGILVIE, since there is no
teaching or suggestion for triggering such an alarm in the art of record” (Appeal
Br. 15). The Examiner held it would have been obvious to one of ordinary skill in
the art to modify the system of Moreno to incorporate “a lockable storage device
that sets a password with a central controller when the goods (i.e., article) are
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placed in the storage device” as taught by Ogilvie in order “to prevent a user from
prematurely accessing the locker” (Answer 7). Therefore, the Examiner has not
relied on Ogilvie for any teaching of an alarm system, but rather for its teaching of
setting an access password after an article has been delivered. As such, we find
Appellants’ argument regarding the “alarm” of Ogilvie unpersuasive.
For the reasons presented supra, we sustain the Examiner’s rejection of
claims 1-6 and 21-23 as unpatentable over Moreno, Maloney, and Ogilvie.

Rejection of claims 7-10 and 12-14 as unpatentable over Moreno and Ogilvie
Appellants separately argue independent claim 7 (Appeal Br. 20-21). More
specifically, Appellants contend that Moreno fails to teach or suggest “a receipt
setting module for receiving a specification of the locker to which the article is to
be delivered” or “a delivery information issuance module for outputting locker
identification information and article identification information” because Moreno
merely discloses assigning or allocating lockers to a potential delivery and storing
the locker allocation data in a database (Appeal Br. 21). We disagree.
As noted by Appellants, Moreno discloses that once the order size, locker
requirements and estimated time of delivery are determined (i.e., a specification of
the locker), the information is forwarded to the service provider (Finding of Fact
19). The service provider then reserves/assigns lockers, e.g., lockers 12, 21, and
23, based on the received locker specification, and assigns a unique delivery PIN
number to the order (Finding of Fact 20). This information, i.e., the delivery PIN
and assigned locker information is then forwarded to the vendor and the
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kiosk/controller associated with the assigned lockers (Finding of Fact 20).
Therefore, contrary to Appellants’ contention, Moreno teaches more than merely
assigning lockers to a potential delivery and storing the information in the
database.
Appellants argue claims 8-10 as a group (Appeal Br. 21-25). Although
Appellants list elements of dependent claims 9 and 10 on pages 24-25 of the Brief,
Appellants do not provide any argument as to why the cited art does not teach or
suggest the listed elements. In particular, Appellants fail to specifically rebut the
Examiner’s findings of fact as to the scope and content of the prior art and the
determination of obviousness of the claimed subject matter. A statement which
merely points out what a claim recites will not be considered an argument for
separate patentability of the claim. 37 C.F.R. § 41.37(c)(vii) (2006). As such, we
select claim 8 as the representative claim, and the remaining claims 9 and 10 stand
or fall together with claim 8.
Appellants contend that Moreno fails to teach or suggest “a receipt setting
module for receiving a specification of the locker to which the article is to be
delivered” or “a delivery information issuance module for outputting locker
identification information and article identification information” because Moreno
merely discloses assigning or allocating lockers to a potential delivery and storing
the locker allocation data in a database (Appeal Br. 21-22). We disagree for the
same reasons presented supra with respect to claim 7. As such, we sustain the
Examiner’s rejection of claims 8-10 as unpatentable over Moreno and Ogilvie.
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Appellants argue claims 12-14 as a group (Appeal Br. 23-26). Although
Appellants list elements of dependent claims 13 and 14 on pages 25-26 of the
Brief, Appellants do not provide any argument as to why the cited art does not
teach or suggest the listed elements. In particular, Appellants fail to specifically
rebut the Examiner’s findings of fact as to the scope and content of the prior art
and the determination of obviousness of the claimed subject matter. A statement
which merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(c)(vii) (2006). As such,
we select claim 12 as the representative claim, and the remaining claims 13 and 14
stand or fall together with claim 12.
Appellants contend that neither Moreno nor Ogilvie disclose or suggest “a
lock control module for controlling locking and unlocking of a specified locker to
which an article is to be delivered” (Appeal Br. 23). More specifically, Appellants
argue that although “MORENO appears to discloses [sic] the allocation of the
lockers, it is not apparent that the same system controls the locking and unlocking
of the locker” Id. We disagree.
Moreno discloses that after the deliverer places the ordered items into the
assigned lockers, the kiosk/controller sends notification to the IR servers that the
delivery has been made (Finding of Fact 22). The IR servers then tell the
kiosk/controller to set the access PIN number for the assigned lockers to the
customer’s PIN # (Finding of Fact 23). Accordingly, it is the IR servers (i.e., the
service provider) that assign the lockers and the deliverer and customer access
PINs, and output the information to the locker controller. Therefore, contrary to
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Appellants’ contentions, Moreno teaches both assigning and controlling the
locking/unlocking of the lockers by the same system. As such, we sustain the
Examiner’s rejection of claims 12-14 as unpatentable over Moreno and Ogilvie.

Rejection of claim 11 as unpatentable over Moreno, Ogilvie, and Hall
Appellants contend that Hall fails to overcome the alleged deficiencies of
Moreno and Ogilvie presented with respect to claim 8, from which claim 11
depends (Appeal Br. 27). We find Appellants’ arguments with regard to
independent claim 8 unpersuasive for the reasons presented supra. As such, we
sustain the Examiners rejection of claim 11 as unpatentable over Moreno, Ogilvie
and Hall.

Rejection of claims 15-18 and 24-26 as unpatentable over Moreno, Ogilvie, and
Stephens
Appellants argue claims 15-18 and 24-26 as a group (Appeal Br. 28-33).
Although Appellants list elements of dependent claims 15, 17, 18 and 24-26 on
pages 30-32 of the Brief, Appellants do not provide any argument as to why the
cited art does not teach or suggest the listed elements. In particular, Appellants fail
to specifically rebut the Examiner’s findings of fact as to the scope and content of
the prior art and the determination of obviousness of the claimed subject matter. A
statement which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim. 37 C.F.R. § 41.37(c)(vii) (2006).
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24
As such, we select claim 16 as the representative claim, and the remaining claims
15, 17, 18, and 24-26 stand or fall together with claim 16.
Appellants contend that Moreno fails to teach or suggest “a receipt setting
module for receiving a request for delivery of an article by receiving specification
of a locker to which an article is to be delivered and customer identification
information identifying a customer provided from a terminal of said customer over
a network” or “a delivery information issuance module for outputting locker
identification information identifying said locker and article identification
information identifying said article…and for outputting a delivery password for
locking said locker” because Moreno merely discloses assigning or allocating
lockers to a potential delivery and storing the locker allocation data in a database
(Appeal Br. 29-30). We disagree.
As noted by Appellants, Moreno discloses that once the order size, locker
requirements and estimated time of delivery are determined (i.e., a specification of
the locker), the information is forwarded to the service provider (Finding of Fact
19). The service provider then reserves/assigns lockers, e.g., lockers 12, 21, and
23, based on the received locker specification, and assigns a unique delivery PIN
number to the order (Finding of Fact 20). This information, i.e., the delivery PIN
and assigned locker information is then forwarded to the vendor and the
kiosk/controller associated with the assigned lockers (Finding of Fact 20).
Therefore, contrary to Appellants’ contention, Moreno teaches more than merely
assigning lockers and storing the information in the database. As such, we sustain
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the Examiner’s rejection of claims 15-18 and 24-26 as unpatentable over Moreno,
Ogilvie, and Stephens.

Rejection of claim 19 as unpatentable over Moreno, Ogilvie, Stephens, and Kakuta
Appellants contend that Kakuta fails to overcome the alleged deficiencies of
Moreno, Ogilvie, and Stephens presented with respect to claim 16, from which
claim 19 depends (Appeal Br. 34). We find Appellants’ arguments with regard to
independent claim 16 unpersuasive for those reasons presented supra. As such, we
sustain the Examiner’s rejection of claim 19 as unpatentable over Moreno, Ogilvie,
Stephens, and Kakuta.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred in
rejecting claims 1-6 and 21-23 as unpatentable over Moreno, Maloney, and
Ogilvie, claims 7-10 and 12-14 as unpatentable over Moreno and Ogilvie, claim 11
as unpatentable over Moreno, Ogilvie, and Hall, claims 15-18 and 24-26 as
unpatentable over Moreno, Ogilvie, and Stephens, and claim 19 as unpatentable
over Moreno, Ogilvie, Stephens, and Kakuta.

DECISION
The Examiner’s decision under 35 U.S.C. § 103(a) to reject claims 1-30 is
affirmed.
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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) (2006).
AFFIRMED

jrg

Andrew M. Calderon
GREENBLUM AND BERSTEIN, P.L.C.
1950 Roland Clarke Place
Reston VA, 20191