GO MOTO, INC. et al.

Patent Trials and Appeals Board

Apr 14, 2021

2020006764 (P.T.A.B. Apr. 14, 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.
15/451,060 03/06/2017 Todd Marcelle GoMoto.005002 9625
100183 7590 04/14/2021
Locklar PLLC
Michael Locklar
238 S. Egret Bay Blvd. # 386
League City, TX 77573
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
docket@adolphlocklar.com
docket@al-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TODD MARCELLE, CHRISTOPHER GILDER,
ROBERT FLORIG, LYNWOOD A. WILLIAMS JR,
and PHILIP AUBREY WHITE
____________

Appeal 2020-006764
Application 15/451,060
Technology Center 3600
____________

Before JAMES P. CALVE, NINA L. MEDLOCK, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–7 and 21–23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
CLAIMED INVENTION
The claimed invention “relates generally to systems and methods for
scheduling, performing and securing payment for services” (Spec. ¶ 2).
Claim 1, reproduced below, is the sole independent claim, and
representative of the subject matter on appeal:
1. A kiosk system comprising:
a processor;
a memory device coupled to the processor;
a scanning device in electronic communication with the
processor;
a key storage system within an exterior surface in
electronic communication with the processor, comprising a
deposit zone, the deposit zone comprising a first lockable bin, the
lockable bin adapted to rotate forward from the exterior surface,
and a retrieval zone, the retrieval zone comprising a second
lockable bin adapted to rotate forward or slide outward from the
exterior surface, wherein the deposit zone is separate from the
retrieval zone; and

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 25, 2020) and Reply Brief (“Reply Br.,” filed September 28,
2020), and the Examiner’s Answer (“Ans.,” mailed September 18, 2020),
and Non-Final Office Action (“Non-Final Act.,” mailed June 16, 2020).
Appellant identifies GO MOTO, INC. and MERIDIAN ZERO, LLC as the
real parties in interest (Appeal Br. 4).
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a computer readable storage device coupled to the
processor, wherein the storage device contains program code
executable by the processor via the memory device to implement
a method for performing a service transaction comprising the
steps of:
receiving, by the processor, user input identifying a
user profile;
displaying, by the processor, a plurality of services
available for each vehicle registered to the user profile;
scheduling, by the processor, a selected service;
assigning, by the processor, a storage location for a
key deposited into the deposit zone of the key storage
system; and
providing, by the processor, a scannable code,
wherein the scannable code identifies the storage location
of the key and instructs the computer system to retrieve the
key as a function of scanning the scannable code with the
scanning device.
REJECTION
Claims 1–7 and 21–23 are rejected under 35 U.S.C. § 103 as
unpatentable over Stefik et al. (US 2012/0095790 A1, published Apr. 19,
2012) (“Stefik”), Heinz et al. (US 2010/0155471 A1, published June 24,
2010) (“Heinz”), Adams et al. (US 2012/0310410 A1, published Dec. 6,
2012) (“Adams”), Miles et al. (US 2007/0226088 A1, published Sept. 27,
2007) (“Miles”), and Fee et al. (US 4,753,387, issued June 28, 1988)
(“Fee”).
ANALYSIS
By way of background, Stefik is directed to a computer-implemented
system and method for managing on-street valet parking (Stefik ¶ 2), and
discloses that, in one embodiment, the valet service can be structured for
drop-off only (id. ¶ 211). In accordance with this embodiment, the valet,
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upon receiving a car for parking, gives the driver a token that the driver can
use, upon her return, to unlock a lockbox (situated near the location where
the driver dropped off the car) and retrieve her keys (id.). Upon parking the
car, the valet places the car keys in the lockbox, along with a printed map or
other directions to the place where the car is parked (id.).
Stefik discloses that, with its system, there is no need for a motorist to
communicate with the valet if she is running late to pick up her vehicle
(Stefik ¶ 212). However, where mobile communication with the valet is
available, a driver can make a reservation through her mobile phone to
guarantee that the valet will be waiting for her vehicle drop-off; a driver may
also request that the valet find a parking space close to the driver’s ultimate
destination, rather than at the drop-off point (id.). The valet can notify the
driver, by phone, of the parking location of the car, and provided the driver
has a second key with her, she can retrieve her car first and then drive back
to the valet station to retrieve the first car key from the valet or lockbox,
rather than first retrieving the key and walking back to her car (id.).
Heinz is substantially similar, and discloses an automated access
control system which provides automated storing of an item, e.g., a key, and
access to the stored item, when needed (Heinz ¶ 5). Heinz discloses that, in
one embodiment, the access control system includes a storage rack
comprising a plurality of storage compartments; a user port; a memory
storing program instructions for placing a key in one of the storage
compartments, associating the key with the storage compartment, identifying
a user, associating the user with the stored key, removing the stored key
from the storage compartment, and making the removed key accessible to
the user at the user port; and a processor operably connected to the memory
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for executing the program instructions (id. ¶ 6). In another embodiment, a
method of automatically controlling access to a key includes placing a key
within a kiosk via a user port; moving the key to a selected storage
compartment; storing data associating the key with the selected storage
compartment in an inventory database; identifying the selected storage
compartment using the stored association data; retrieving the key from the
storage compartment; and releasing the retrieved key to a user at the user
port (id. ¶ 8, see also ¶¶ 36–44, 46–49 (describing a key retaining
mechanism positioned at the user port for receiving a key for storage and
making the key accessible at the user port for retrieval)).
Claim 1, reproduced above, is directed to a kiosk system, and recites
that the system comprises, inter alia, a key storage system comprising a
“deposit zone comprising a first lockable bin” and a “retrieval zone
comprising a second lockable bin.” In rejecting claim 1 under 35 U.S.C.
§ 103, the Examiner interpreted the term “zone” as “any continuous area that
differs in some respect, or is distinguished for some purpose, or within
which certain distinctive circumstances exist or are established”; and the
Examiner opined, “there is no claimed or defined structural difference
between the deposit and retrieval zones and there is no instance describe[d]
in the specification of the instant application where both zones are used
simultaneously” (Non-Final Act. 3).
The Examiner concluded, “the zones, as claimed, do not constitute
different structural elements of the claims, merely different functional acts
that occur” (Non-Final Act. 4). And the Examiner took the position that
Stefik meets the claim language because Stefik teaches a lockbox that, based
on what type function is being performed and by what type user,
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“illustrate[s] both a deposit and retrieval zone based on the ordinary and
accustomed meaning of the term zone. Stefik shows that when a user places
the key into the lock box, contextually, it is acting as a deposit zone, [and]
when a different user is retrieving the stored key from the lockbox, it is
acting separately as a retrieval zone” (id. at 3–4). The Examiner took a
substantial similar position with respect to Heinz’s user port and retaining
mechanism (id. at 4).
Appellant argues, and we agree, that the deposit zone and retrieval
zone, i.e., the first and second lockable bins, as called for in claim 1, are
physically separate structures, i.e., structures separated by space, rather than
time (Appeal Br. 10–11). And Appellant maintains that the present rejection
cannot be sustained at least because Stefik and Heinz “use the same device
for deposit and retrieval” (id. at 11).
Responding to Appellant’s argument, the Examiner posits that “even
if arguendo the different functions did not constitute separate zones,” the
“mere duplication of parts, such as a first and second lockable bin vs. a
single bin performing two distinct functions, does not convey a patentable
function” (Ans. 5). The Examiner reasons that “[a]lthough the references do
not explicitly recite two separate distinct bins that perform the two separate
distinct functions, [i.e., deposit and retrieval,] they provide a single bin
capable of the two separate and distinct functions claimed” (id.; see also
Non-Final Act. 11). Citing In re Harza, 274 F.2d 669 (CCPA 1960), the
Examiner, thus, takes the position that “the mere duplication of parts, i.e.
two lockable bins, has no patentable distinction because there is not a new
and unexpected result that is produced because two bins are used, since the
single bin is capable of performing both claimed functions” (Ans. 5).
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In Harza, the court observed that the only difference between the
reference’s structure and that of Harza’s claim 1 was that the reference
shows only a single rib on each side of a web, whereas the claim requires a
plurality of such ribs on each side of the web. See Harza, 274 F.2d at 671.
And the court remarked, “[i]t is well settled that the mere duplication of
parts has no patentable significance unless a new and unexpected result is
produced, and we are of the opinion that such is not the case here.” Id.
Relying on Harza, the Examiner maintains here that an additional bin
would be a mere duplication of parts and, therefore, would have been
obvious to a person of ordinary skill in the art at the time of Appellant’s
invention. Yet, to the extent the Examiner relies on Harza as establishing a
per se rule that duplication of parts is obvious, we note that Federal Circuit
has stated that
[t]he use of per se rules, while undoubtedly less laborious than a
searching comparison of the claimed invention – including all its
limitations - with the teachings of the prior art, flouts section 103
and the fundamental case law applying it. Per se rules that
eliminate the need for fact-specific analysis of claims and prior
art may be administratively convenient for PTO examiners and
the Board. Indeed, they have been sanctioned by the Board as
well. But reliance on per se rules of obviousness is legally
incorrect and must cease.
In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Thus, rather than relying
on per se rules, to establish a prima facie case of obviousness, the Examiner
must explain why a person of ordinary skill in the art would have had an
apparent reason to modify the references, as the Examiner proposes, to
arrive at the claimed invention. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
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obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007).
Responding to Appellant’s argument that “Stefik teaches a simple
token system to enable a motorist to retrieve his keys from a valet” and that
“[n]o reason exists to incorporate separate deposit and retrieval zones”
(Appeal Br. 12), the Examiner posits that “it could be considered desirable”
in Stefik’s valet system to have separate deposit and retrieval areas for keys,
or separate deposit and retrieval areas for different users of the valet system
“in order to make the system more user friendly and easily accessible for
customers and valets in a typical scenario or if a parked vehicle is required
to be moved to a different location while it is parked and in the valet’s care”
and that “[h]aving two zones, two bins or a larger kiosk that two people
could use simultaneously may improve the ease of use or rate at which users
could access the kiosk” (Ans. 5–6). But, we fail to see why, and the
Examiner does not adequately explain why, having separate deposit and
retrieval areas (i.e., a first bin in which the valet deposits a driver’s key upon
receiving a car for parking, and a separate second bin from which the driver
later retrieves his or her keys) would somehow make the Stefik system more
user friendly and easily accessible for customers and valets. Indeed, having
separate deposit and retrieval areas seemingly would make the Stefik system
less user friendly at least from the perspective of the valet, who would be
required upon accepting a customer’s keys and depositing the keys in a first
bin, to then physically move the keys to a potentially distant second bin for
retrieval by the customer.
We are not persuaded, on the present record, that the Examiner
properly rejected claim 1 under 35 U.S.C. § 103. Therefore, we do not
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sustain the Examiner’s rejection of claim 1. For the same reasons, we also
do not sustain the Examiner’s rejection of dependent claims 2–7 and 21–23.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 21–23 103 Stefik, Heinz,
Adams, Miles, Fee
1–7, 21–23
REVERSED