2020000897 (P.T.A.B. Apr. 30, 2021)

Ralph Wiechers

Patent Trials and Appeals BoardApr 30, 2021

2020000897 (P.T.A.B. Apr. 30, 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. 15/205,884 07/08/2016 Ralph Wiechers 510933 6138 53609 7590 04/30/2021 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER SALMAN, RAIED A ART UNIT PAPER NUMBER 2495 NOTIFICATION DATE DELIVERY MODE 04/30/2021 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte RALPH WIECHERS ____________________ Appeal 2020-000897 Application 15/205,884 Technology Center 2400 ____________________ Before ROBERT E. NAPPI, BETH Z. SHAW, and MICHAEL T. CYGAN, Administrative Patent Judges. CYGAN, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–5, 7–15, and 17–20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2018). According to Appellant, Deutsche Post AG is the real party in interest. Appeal Br. 2. Appeal 2020-000897 Application 15/205,884 2 CLAIMED SUBJECT MATTER The claimed subject matter pertains to a method allowing selected actions to be enabled by an access control apparatus. Spec. ¶ 2. In particular, the claimed method pertains to receiving a message requesting to cause an action, checking authorization for the request, and determining whether the action is to be caused by a first apparatus or a control unit. Abstract; Spec. ¶ 3. The claimed subject matter is used to control access by a person to an opening of a container; in particular, a parcel box or a parcel butler. Id. ¶¶ 4, 21. A parcel box is similar to a mailbox, but with greater receiving volume. Id. ¶ 4. A parcel butler may be a collapsible container that can be installed on a building or apartment door when required. Id. ¶ 132. Claim 1 is reproduced below. 1. A method, performed by a first apparatus, said method comprising: obtaining a message from a second apparatus, which is used to request the causing of an action, checking the authorization for the request on the basis of the obtained message, checking whether the action is an action that is to be performed or caused by the first apparatus or an action that is to be caused by a control unit that is separate from the first apparatus, wherein the first apparatus is one of a parcel box or a parcel butler or an apparatus fitted in or on a parcel box or an apparatus fitted in or on a parcel butler, and wherein the control unit is one of a control unit of a home automation system or a control unit of a central locking system of a building, and Appeal 2020-000897 Application 15/205,884 3 if it is established that authorization exists and that the action is to be caused by the control unit, transmitting a request to the control unit to cause the action. Claims App. 1 (emphasis added to indicate limitation in dispute). Independent claims 11 and 20 recite a memory having computer program instructions coupled to a processor, configured to cause a server or apparatus, respectively, to perform tasks similar to those set forth in the steps of claim 1. Id. at 3, 5. Dependent claims 2–5, 7–10, 12–15, and 17–19 each contain the limitations of their respective independent claims. Id. at 1– 5. EXAMINER’S REJECTIONS2 The Examiner rejects claims 1, 3–5, 7–11, and 17–20 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Benoit et al. (US 9,763,086 B2, Sept. 12, 2017) (“Benoit”) and Conlin et al. (US 2005/0204167 A1, Sept. 15, 2005) (“Conlin”). Final Act. 14–17, 19–22. The Examiner rejects claim 2 and 12 under 35 U.S.C. § 103 as unpatentable over the combined teachings of Benoit, Conlin, and Sadighi et al. (US 2013/0285793 A1, Oct. 31, 2013) (“Sadighi”). Final Act. 17–19. ANALYSIS We have reviewed Appellant’s arguments in the Appeal Brief and the Reply Brief, the Examiner’s rejections, and the Examiner’s response to 2 Throughout this Decision, we refer to the Appeal Brief filed June 3, 2019 (“Appeal Br.”); Reply Brief filed November 18, 2019 (“Reply Br.”); Final Office Action mailed December 5, 2018 (“Final Act.”); and the Second or Subsequent Examiner’s Answer mailed September 20, 2019 (“Ans.”). Appeal 2020-000897 Application 15/205,884 4 Appellant’s arguments. Appellant’s arguments have persuaded us of error in the Examiner’s rejection of all of the claims under 35 U.S.C. § 103. We begin with claim 1. Rejection of Independent Claim 1 Claim 1 requires, inter alia, checking whether an action is to be performed by a control unit or by a first apparatus, “wherein the first apparatus is one of a parcel box or a parcel butler or an apparatus fitted in or on a parcel box or an apparatus fitted in or on a parcel butler.” See Claim 1. The Examiner finds that the combination of Benoit and Conlin teaches all of the limitations of claim 1. Final Act. 14–17. Specifically, the Examiner finds that Benoit teaches checking whether an action is to be performed by a first apparatus, in the form of an unlock command sent by an access control manager 130 at building or house 124 (“first apparatus”) by wireless link 142, or by a control unit, in the form of a transmission of a virtual key from control unit 160 by wireless link 169. Id. at 15–16; Benoit Fig. 1. The Examiner explains that the building or house of Benoit may be the first apparatus because “the claims do not clarify what the parcel box is…and so the implication ‘on a parcel box or an apparatus fitted in’ can mean that the entirety of the house, even in its grandiosity as size is not a restriction in the specification, is the parcel box.” Ans. 5. Appellant argues that claim 1 is “directed to a method performed by a first apparatus,” described as “one of a parcel box or a parcel butler or an apparatus fitted in or on a parcel box or an apparatus fitted in or on a parcel butler.” Appeal Br. 6. Appellant argues that the Examiner construes “first apparatus” in a manner that defies “grammatical and/or logical sense,” Appeal 2020-000897 Application 15/205,884 5 because considering only “an apparatus fitted in” ignores a subsequent requirement as to what the apparatus is fitted in. Id. at 6–7. Appellant contends that the Examiner fails to interpret a parcel box or parcel butler in view of the Specification or the knowledge of one of ordinary skill in the art. Reply Br. 7–8 (citing Spec. ¶ 4). Appellant further argues that even if the Examiner has improperly found that the combination of Benoit and Conlin teaches a parcel box or parcel butler included in the building of Benoit, the Examiner has not shown that it would have been obvious to have the owner access point 130 of Benoit fitted in or on the parcel box or parcel butler. Appeal Br. 8–9 (citing Examiner Interview Summary conducted Jan. 28, 20193; Advisory Action mailed Apr. 2, 2019). We begin our analysis by looking to the construction of “parcel box” and “parcel butler” as set forth in claim 1. There is a “heavy presumption” that the terms used in claims “carry their ordinary and customary meaning to those skilled in the art in light of the claim term's usage in the patent specification.” Elbex Video, Ltd. v. Sensormatic Electr. Corp., 508 F.3d. 1366, 1371 (Fed. Cir. 2007). Appellant’s Specification discloses, with respect to parcel boxes: Parcel boxes allow a novel form of delivery/pickup of parcels for persons who wish to receive or send parcels at or in proximity to their residence even in their absence. To this end, parcel boxes are usually installed in front of the residence of the parcel box user - in a similar manner to a mailbox, but with a greater receiving volume – and parcels are then delivered by the delivery agent by placing them into the parcel box. 3 Appellant refers to the “Interview Summary dated February 6, 2019.” Appeal Br. 8. The corresponding Examiner Interview was conducted on January 28, 2019, and subsequently mailed February 6, 2019. Appeal 2020-000897 Application 15/205,884 6 Spec. ¶ 4. With respect to a “parcel butler,” the Specification provides an example, as “a collapsible container that can be installed on a building or apartment door whenever required. As with a parcel box, a delivery agent can place a shipment into the parcel butler and lock it up against theft by means of a locking system.” Id. ¶ 131 (emphasis added). Accordingly, Appellant’s Specification describes a “parcel box” or “parcel butler” as a container intended to be used for receiving and removing parcels. Id. at ¶¶ 4, 131. Such a container is described as separate from a residence or a building, because it may be “installed” on a building or situated “in proximity” to or “in front of” a residence. Id. Benoit describes structure 124 as “a building, a house, an apartment, a government building or facility, a university building or facility, a corporate building or facility, or any sort of room, building, structure, etc., that has an entry.” Benoit 7:66–8:3. Figure 1 of Benoit, reproduced below, illustrates structure 124 as a building or house: Appeal 2020-000897 Application 15/205,884 7 Figure 1, above, shows an example diagram of an embodiment of Benoit. Benoit 1:58–59. In view of the disclosure in Appellant’s Specification of a “parcel box” and “parcel butler” being a container that is separate from a building or residence (Spec. ¶¶ 4, 131), we agree with Appellant that “building/house” 124 of Benoit cannot be reasonably construed as being a “parcel box” or “parcel butler.” Reply Br. 6–8. Thus, despite the lack of any size limitations associated with the parcel box or parcel butler (Ans. 4), we do not agree with the Examiner’s finding that Benoit’s building/house itself teaches or suggests a “parcel box” or “parcel butler.” Further, because the Examiner has not pointed to any other structure as the “parcel box” or the “parcel butler,” we do not agree with the Examiner’s finding that Benoit’s building/house is an “excess” of, or an “apparatus fitted in,” a parcel box or a parcel butler. Ans. 7. Similarly, we do not agree with the Examiner’s Appeal 2020-000897 Application 15/205,884 8 finding that the access point (AP) 130 that is in building/house 124 is an “apparatus fitted in” a parcel box or parcel butler. Ans. 7–8. For the foregoing reasons, Appellant’s arguments have persuaded us of error in the Examiner’s rejection of claim 1. We agree with Appellant that the Examiner’s proposed combination does not render obvious the disputed limitation of claim 1, nor independent claims 11 and 20, which each recite similar features.4 Accordingly, we do not sustain the Examiner’s obviousness rejection of claims 1, 11, and 20 and claims 2–5, 7–10, 12–15, and 17–19 depending therefrom. New Ground of Rejection Although we are persuaded by Appellant that the combination of Benoit and Conlin fails to teach or suggest that the second apparatus may be a parcel box or parcel butler, such a teaching is provided by Van Rysselberghe (US 2011/0130134 A1, June 2, 2011) (made of record in the prosecution history by Appellant on the Information Disclosure Statement filed Jan. 13, 2017). Van Rysselberghe is directed to remotely operable locks to secure a building or a locker. Van Rysselberghe ¶ 6. The locker, which is an 4 Claims 11 and 20 are apparatus claims of a computer processor, memory, and a computer program “configured to cause” certain acts when executed. The Examiner has not addressed whether the parcel box and parcel butler in these claims are structural limitations in the sense that the claims necessarily require those structures, or are functional limitations in the sense that the claimed apparatus is “configured to cause” acts by, but does not itself include, the parcel box or parcel butler structures. In view of our new grounds of rejection, infra, we decline to newly address this issue in this decision. Appeal 2020-000897 Application 15/205,884 9 enclosure that may be anchored to the ground or to a building, “may be located at a residence, business, or other dwelling for receiving delivery of goods.” Id. ¶ 16. The locker may be used to receive mail and packages, such as from the U.S. Postal Service or United Parcel Service, when the owner is away. Id. ¶ 2. Because Van Rysselberghe’s locker is a container that is separate from a building or residence, we find the locker to teach a “parcel box” and “parcel butler” under their plain meaning in view of the Specification. See Spec. ¶¶ 4, 131. With respect to the operation of the locker, Van Rysselberghe describes a first apparatus (e-lock 68) that obtains a message (via data input 75) which is used to request the causing of an action (actuating latch 71 to gain access to locker 70 of e-lock 68). Van Rysselberghe at Fig. 2, ¶¶ 39–40. Subsequently, Van Rysselberghe checks the authorization for the request on the basis of the obtained message through microprocessor 74, which “is programmed to determine, based on instructions from a remote lock server, whether entry criteria are satisfied.” Id. ¶¶ 40, 45. This procedure may be used to access either an exterior locker or the front door of a residence. Id. ¶ 43. Because of the similarities in the remote access operations of Benoit and Van Rysselberghe, a skilled artisan at the time of Appellant’s invention would have found it obvious to modify Benoit and Conlin with the teachings of Van Rysselberghe to have the first apparatus be one of a parcel box or a parcel butler, or an apparatus fitted in or on either a parcel box or a parcel butler. Whereas Benoit teaches access to the door of a building through a remote access lock, Van Rysselberghe teaches access to either a door of a building or to a parcel box/butler in the form of a locker exterior to a house. Appeal 2020-000897 Application 15/205,884 10 Van Rysselberghe ¶¶ 16, 20; Benoit Fig. 1, 7:66–8:7. Thus, Van Rysselberghe teaches that a remote access system, such as used in Benoit, can be applied to either a door or to a parcel box or a parcel butler. In this manner, Van Rysselberghe also shows that the mere substitution of a locker for a door in a remote access locking system was known in the art and would yield a predictable result. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007) (stating, “when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result”). Such description in Van Rysselberghe also indicates that one having ordinary skill in the art would have had a reasonable expectation of success using the remotely operated locker of Van Rysselberghe in the remote access system taught by Benoit and Conlin. Furthermore, Van Rysselberghe states that the provision of a remote access lock on a locker exterior to, or attached to, a building provides the advantage of delivering goods securely in a manner that does not require customers to be home to receive the delivery. Van Rysselberghe ¶ 3. In this manner, Van Rysselberghe provides a motivation for applying the access control system of Benoit and Conlin to a parcel box or parcel butler. Accordingly, for the reasons discussed above, we reject claim 1 over the combined teachings of Benoit, Conlin, and Van Rysselberghe. Independent claims 11 and 20 recite similar limitations and are rejected for the same reasons as claim 1. With respect to dependent claims 3–5, 7–10, 13–15, and 17–19, we adopt the Examiner’s rationale as modified to incorporate the teaching of Appeal 2020-000897 Application 15/205,884 11 Van Rysselberghe as applied to claims 1, 11, and 20 and now reject these claims under the combination of Benoit, Conlin, and Van Rysselberghe. We further adopt the Examiner’s reasoning with respect to the rejection of claims 2 and 12, and reject claims 2 and 12 over the combination of Benoit, Conlin, Van Rysselberghe, and Sadighi using the rationale provided by the Examiner, as modified to incorporate the teaching of Van Rysselberghe as applied to claims 1, 11, and 20. Because our rejections newly rely upon Van Rysselberghe, we designate the rejections of claims 1–5, 7–15, and 17–20 as a new ground of rejection under 37 C.F.R. § 41.50(b) so that Appellant has an opportunity to respond to these new findings. Appeal 2020-000897 Application 15/205,884 12 CONCLUSION In summary: Claim Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 1, 3–5, 7– 11, 13– 15, 17–20 103 Benoit, Conlin 1, 3–5, 7– 11, 13–15, 17–20 2, 12 103 Benoit, Conlin, Sadighi 2, 12 1, 3–5, 7– 11, 13– 15, 17–20 103 Benoit, Conlin, Van Rysselberghe 1, 3–5, 7– 11, 13–15, 17–20 2, 12 Benoit, Conlin, Van Rysselberghe Sadighi 2, 12 Overall Outcome 1–5, 7–15, 17–20 1–5, 7–15, 17–20 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). This section provides that “[a] new ground of rejection . . . shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Appeal 2020-000897 Application 15/205,884 13 examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . 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). See 37 C.F.R. § 41.50(f). REVERSED; 37 C.F.R. § 41.50(b)