SmartMart, Inc.

Patent Trials and Appeals Board

Nov 25, 2020

2020002911 (P.T.A.B. Nov. 25, 2020)

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.
16/211,490 12/06/2018 Michael A. Rivalto SmartMart-1-US2 1762
157935 7590 11/25/2020
Walk Cook Lakey PLC
431 S. Main St.
Memphis, TN 38103
EXAMINER
YU, ARIEL J
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
lstclair@walkcook.com
ssentilles@walkcook.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL A. RIVALTO and JASON FISHER
____________

Appeal 2020-002911
Application 16/211,490
Technology Center 3600
____________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
system for receipt, storage, and delivery of packages to customers. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as Smart Mart,
Inc. (see Appeal Br. 1). We have considered and herein refer to the
Specification of Dec. 6, 2018 (“Spec.”); Final Office Action of June 17,
2019 (“Final Act.”); Appeal Brief of Nov. 18, 2019 (“Appeal Br.”);
Examiner’s Answer of Jan. 2, 2020 (“Ans.”); and Reply Brief of Mar. 2,
2020 (“Reply Br.”).
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Statement of the Case
Background
The Specification teaches an “automated package delivery system for
receipt, storage and delivery of packages to customers, the system includes a
facility unit body providing a secure internal storage for an automatic
package receiver and a distributor service module” (Spec. 3:11–13).
The Claims
Claims 1–30 are on appeal. Independent claim 1 is representative and
is reproduced below:
1. A system for receipt, storage and delivery of packages to
customers, the system comprising:
a facility unit body providing a secure internal storage for an
automatic package receiver and
a distributor service module, the service module
comprising:
at least one package receiving port for receiving a
plurality of individual packages into the facility unit
body, the package receiving port accessible from an
exterior of the facility unit,
a package storage area for securely storing the
packages in the facility unit body,
a package discharge access point accessible from
the exterior of the facility unit body, the access point
positioned for all customers and height compliant with
disabled person laws and regulations, and
a package delivery mechanism for moving
packages between the at least one package receiving port,
the package storage area and the package discharge
access point;
each of the individual packages having package specific
identifying information; and
the service module in two-way communication with higher
level components via a computing device, the higher level
components including a cloud server and an external database,
the computing device configured to:
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receive and transmit the package specific identifying
information to the external database via the cloud server for
storage of the package specific identifying information in the
external database,
receive an input for delivery of a selected individual
package,
retrieve package specific identifying information for the
selected individual package from the external database via the
cloud server,
use the retrieved package specific identifying information
for the selected individual package to retrieve the selected
individual package from the package storage area, and
release the selected individual package to the package
discharge access point for pick-up by or delivery to a customer.

The Rejections
A. The Examiner rejected claims 1–302 under 35 U.S.C. § 112, second
paragraph as indefinite (Ans. 3–4).
B. The Examiner rejected claims 1–7, 9–13, 16–21, and 23–30 under 35
U.S.C. § 103 as obvious over Gupta3 and Pinney4 (Final Act. 2–13).
C. The Examiner rejected claims 8 and 22 under 35 U.S.C. § 103 as
obvious over Gupta, Pinney, and Garson5 (Final Act. 13–14).
D. The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103 as
obvious over Gupta, Pinney, and Kashi6 (Final Act. 14–15).

2 We note that while the Examiner states “claims 1–20” in the statement of
the rejection, the Examiner refers to: “Dependent claims 2–15, 17–30
depends from independent claims 1 or 16; therefore these claims include the
above identified limitation” (Ans. 4). Thus, we treat the rejection as stating
“1–20” instead of the correct “1–30” as an inadvertent error.
3 Gupta et al., US 2013/0261792 A1, published Oct. 3, 2013.
4 Pinney et al., US 2012/0118910 A1, published May 17, 2012.
5 Garson et al., US 2010/0237091 A1, published Sept. 23, 2010.
6 Kashi et al., US 2016/0300187 A1, published Oct. 13, 2016.
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A. 35 U.S.C. § 112, second paragraph
The Examiner finds “the limitation of ‘the access point positioned for
all customers and height compliant with disabled person laws and
regulations’ is indefinite” (Ans. 3). The Examiner finds
laws and regulations may vary by jurisdiction and may vary
over time. Neither the claim nor the specification specify a
particular law, regulation or a jurisdiction, the scope of the
claim thereby subsumes all possibly [sic, possible?] disability
laws and regulations at any time including laws and regulations
not yet conceived at the time of the invention.
(Ans. 4).
Appellant contends “that its selected functional language is sufficient
for those of skill in the art to understand the meaning of the claim” (Reply
Br. 3). Appellant contends “[b]road functionality may cause a claim to fall
under a prior art reference, but it does not in and of itself render a claim
indefinite. The claim is indefinite only if those of skill in the art cannot
understand it” (id. at 4). Appellant contends “the Office has not established
(nor has it attempted to establish) that the language in question is indefinite
to a person of skill in the art, and therefore that a prima facie showing of
indefiniteness has not been established” (id.).
We find the Examiner has the better position. The test for
indefiniteness requires “that a patent’s claims, viewed in light of the
specification and prosecution history, inform those skilled in the art about
the scope of the invention with reasonable certainty.” Nautilus, Inc. v.
Biosig Instruments, Inc., 572 U.S. 898, 911 (2014). As an initial matter,
Appellant does not identify what “disability laws and regulations” apply to
the claimed devices. And for example, the Americans with Disabilities Act
Department of Justice regulations in 36 CFR Appendix D to part 1191
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§ 308.2.2 set particular reach requirements that apply to vending machines,
but Magee v. Coca-Cola, No. 15-31018 (5th Cir. 2016) determined that
“vending machines are not ‘sales establishments’ under the plain meaning of
that term and therefore are not ‘places of public accommodation’ under Title
III of the ADA.” Magee at 9. Consequently, it is indefinite what the
limitation requiring “height compliant with disabled person laws and
regulations” in claim 1 means in this context. Are the claimed systems
covered by the ADA or not? What specific ADA rules apply to the claimed
systems: those for vending machines, for retail counters, or some other
accommodation? If more restrictive state, local, or international laws
require different heights for those localities, which legal framework must be
satisfied?
We do not find Appellant’s reliance on either Eibel Process Co. v.
Minnesota & Ontario Paper Co., 261 U.S. 45 (1923) or Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986) persuasive
because in both of those situations, the term at issue informed the skilled
artisan of the scope of the claim. Here, the “height compliant with disabled
person laws and regulations” phrase provides no clear guidance regarding
appropriate heights but rather requires the ordinary artisan to consider a
potentially changing legal framework in different jurisdictions as interpreted
by different courts. We therefore agree with the Examiner that the claims
are indefinite.

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B. 35 U.S.C. § 103(a) over Gupta and Pinney
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that Gupta and Pinney
render claim 1 obvious?
Findings of Fact
1. Gupta teaches an order fulfillment process in Figure 1 below:

Figure 1 depicts an ordering and delivery process where
multiple customers 100 may submit orders 120, where each
order 120 specifies one or more items from inventory 130 to be
shipped to the customer or to another entity specified in the
order. An order fulfillment facility typically includes a
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receiving operation 180 for receiving shipments of stock from
various vendors and storing the received stock in inventory 130.
To fulfill the orders 120, the item(s) specified in each order may
be retrieved or “picked” from inventory 130 (which may also be
referred to as stock storage) in the order fulfillment facility, as
indicated by picking operation 140. In some implementations,
the items of a customer order may be divided into multiple
shipment sets for fulfillment by a planning service before
fulfillment instructions are generated (not shown). As used
herein, the term “shipment set” may refer to a single item of a
customer’s order, multiple items of a customer’s order, or all
items of a customer’s order.
(Gupta ¶ 23).
2. Gupta teaches a pickup facility as shown in Figure 2 below:

FIG. 2 depicts a block diagram of a pickup location 200,
in one implementation. The pickup location 200 may include
one or more control stations 201 and one or more storage
compartment modules 203, 205, 207, 209. The control station
201 acts as the central control point for the pickup location 200,
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providing power, computing resources, user input and network
access to the pickup location 200.
(Gupta ¶ 34).
3. Gupta teaches that the pickup facility further comprises a
receiving port door that is used “when a carrier is placing items, delivery
containers and/or transfer containers in the storage compartment . . . before
the door 275 is closed and locked” (Gupta ¶ 47).
4. Gupta teaches, regarding a secure storage area, that
each storage compartment may include various security or other
components. For example, looking at the expanded view of
storage compartment 257, disposed within the cavity the
storage compartment may include a locking mechanism 269,
which may be controlled remotely by the command component
of the control station 201 via the storage compartment
management component, a presence detection sensor 271,
motion sensor 272, an image capture device 273.
(Gupta ¶ 45).
5. Gupta teaches, regarding a package discharge access point, that
when a customer interacts with the control station 201 via the
touch control display 213 and provides an access code such that
a storage compartment 257 is opened, the presence detection
sensor 271 and/or motion sensor 272 may be used to confirm
that a customer has reached into the storage compartment 257
and removed its contents.
(Gupta ¶ 47).
6. Gupta teaches that each package has identifying information,
specifically the “delivery container may also include a unique identifier,
such as a bar code, QR code, unique number, etc. to enable tracking and
identification of the delivery container and association of items placed in the
delivery container” (Gupta ¶ 24).
7. Gupta teaches two way communication where “[s]canning of
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the delivery container and the picked item results in the item becoming
associated with and tracked with the delivery container” (Gupta ¶ 24).
8. Gupta teaches “the packing slip typically included in a shipping
package may be applied to the item (e.g., stickered to the item), printed out
at the pickup location upon retrieval of the item, or otherwise made available
to a user” (Gupta ¶ 24).
9. Gupta teaches “data storage 1535 may also include one or more
data stores for maintaining data representing item returns, hold orders,
partial orders, transfer container locations, and other information utilized by
the pickup location.” (Gupta ¶ 134). Gupta further explains the “computing
system and devices may include any combination of hardware or software
that can perform the indicated functions, including computers, network
devices, internet appliances” (Gupta ¶ 136).
10. The Examiner acknowledges that “Gupta does not disclose a
package delivery mechanism for moving packages” or the use of a cloud
server for identifying and releasing packages to customers (see Final Act. 5).
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11. Figure 1 of Pinney is reproduced below:

Figure 1 illustrates “an automated random-access and random-load dispenser
or dispensing unit 100 which allows customers to purchase products,
particularly prescription medicines” (Pinney ¶ 40). Pinney explains that
“computer 124 could be remote from the unit 100 and operate the unit 100
through an information connection, such as a network. Further, the
computer 124 is shown as dedicated to the unit” (Pinney ¶ 46). Pinney
teaches the “pharmacist or technician may utilize another computer (e.g., the
computer or computer network in the pharmacy) to interface with the
computer 124” (Pinney ¶ 84).
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12. Pinney teaches an accessible package receiving port in Figures
18 and 19, reproduced below:

“FIG. 18 illustrates a pharmacist or technician filling prescriptions by
placing a prescribed item 902 into the prescription bag 212” and “scan the
barcode 406 on the label 402 to match the prescribed item 902 and the
prescription bag 212 to a customer in a database on the pharmacy’s
computer network” (Pinney ¶ 88). Figure 19 illustrates a unit into which a
“pharmacist or technician may load the trays 214 with the prescription bags
212” then “access the rear of the housing 102 via the rear doors 602 and
place the filled distribution tray 214 into an open guide 568” (Pinney ¶ 89).
13. Pinney teaches the storage area is secure because “[a]fter the
new prescription bags 212 have been deposited into the unit 100, the
pharmacist or technician closes and locks the rear doors 602” (Pinney ¶ 97)
14. Pinney teaches the “dispensing process may be initiated by a
customer touching the touch screen 104” (Pinney ¶ 99). Pinney teaches
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“[a]fter a customer completes a transaction with the unit 100, the unit 100
may dispense a finished prescription to a dispense bin 310” (Pinney ¶ 42).
15. Pinney teaches “the shuttle assembly 208, alone or in
combination with other components, may pick the bags 212 and load the
bags 212 into a random location in the unit 100” (Pinney ¶ 91). After a
customer requests the prescription, the “shuttle assembly 208 deliver[s] a
selected prescription bag 212 to the dispense bin 310 for delivering the
prescription bag 212 to a specific customer” (Pinney ¶ 65).
16. Pinney teaches the “dispense bin lid is movable between a first
position, in which the product in the dispense bin is inaccessible by the
customer, and a second position, in which the product in the dispense bin is
accessible by the customer for removal” (Pinney ¶ 6).
17. Pinney teaches identifying information on the packages using
“a label 402 having a barcode 406 printed thereon is coupled to one side of
the header 512 and to one of the side walls 516 of the receptacle 508”
(Pinney ¶ 56).
18. Pinney teaches a process in which a controller may “interface
with the computer 124 to relay which trays 214 were accessed by the
pharmacist or technician in order to update the database program in the
computer 124 to ascertain an accurate inventory of the prescription bags 212
in the unit 100” (Pinney ¶ 97).
19. Pinney teaches that “the customer may be instructed to
identify themselves” and the “database program in the computer 124 may
then compare the customer’s identity with the inventory of prescription bags
212 stored in the unit 100” (Pinney ¶¶ 99, 100).
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20. Pinney teaches “[i]f a prescription bag 212 corresponding
to the customer is found in the unit 100, the computer 124 may prompt the
touch screen 104 to display a message displaying the customer’s name and
requesting the customer enter a password to verify their identity” (Pinney
¶ 100). Pinney further teaches the “password may include a user-chosen
password or a pre-assigned PIN that is stored locally in the database
program of the computer 124 or remotely on another database program”
(Pinney ¶ 100).
21. Pinney teaches that after completing the identification
requirements,
the computer 124 may interface with the controller 128 to
provide instructions relating the location of the selected
prescription bags 212. Further, the shuttle assembly 208 and
the platforms 216 may be maneuvered . . . After all of the
selected prescription bags 212 are dispensed into the dispense
bin 310, the computer 124 may prompt the touch screen 104 to
display a message instructing the customer to remove the
prescription bags 212 from the dispense bin 310.
(Pinney ¶ 103).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Analysis
We begin with claim interpretation, since before a claim is properly
interpreted, its scope cannot be compared to the prior art or analyzed for
patent eligibility. We find two limitations that require interpretation.
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“height compliant with disabled person laws and regulations”
While we found this limitation indefinite as discussed above, for prior
art purposes we will interpret this limitation as a legal requirement that the
person of ordinary skill would have known how to meet when designing a
system like Gupta’s or Pinney’s. We therefore find this recitation to be
inherent in any device intended for sale because legal compliance is
necessary and we find legal requirements would have been part of “the
background knowledge possessed by a person having ordinary skill in the
art.” KSR, 550 U.S. at 418.
“cloud server”
In interpreting this phrase, we first turn to the Specification which is,
“[i]n most cases, the best source for discerning the proper context of claim
terms.” Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d
1354, 1360 (Fed. Cir. 2004). While the Specification uses the phrase “cloud
server,” the Specification does not define this term, instead simply using
recitation such as “the remote database server 42 may be one and the same
with the remote cloud server 43, which also houses the main processor 50a”
(Spec. 16:2–3). The Specification also explains
it should be understood that the cloud server 43, local computer
41, and database server 42 may each be in a single location
(including at a single automated retail facility unit 1), but the
possible configurations and IoT architecture of the computer
system components 40 in communication with locally disposed
mechanical components 45 allow for one or each of these three
primary computer device components to be remote from one
another or each of these various components.
(Spec. 36:6–11). The Specification teaches the “computing device is
configured to receive and transmit the package specific identifying
information to the external database via the cloud server for storage of the
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package specific identifying information in the external database” (Spec.
3:23 to 4:2).
Thus, in the context of the Specification, a “cloud server” may be a
remote database server or it may be a server at the automated retail facility
unit. The “cloud server” functions as an intermediary between the database
server and the local computer.
The extrinsic dictionary definition in Techopedia7 of “cloud server” is
that: “A cloud server is a logical server that is built, hosted and delivered
through a cloud computing platform over the Internet. Cloud servers
possess and exhibit similar capabilities and functionality to a typical server
but are accessed remotely from a cloud service provider.” We further note
that a “server” is simply a computer that provides data to other computers.8
Based on the intrinsic evidence of the Specification and the extrinsic
dictionary definition, we interpret the phrase “cloud server” as
encompassing a computer that provides data to other computers over the
internet.
Prima facie Obviousness
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2–13; FF 1–21) and agree that
the claims are obvious over Gupta and Pinney. We address Appellant’s
arguments below.

7 Techopedia, Cloud Server, https://www.techopedia.com/definition/29019
/cloud-server (Accessed Nov. 18, 2020).
8 See, e.g., https://techterms.com/definition/server (Accessed Nov. 18, 2020).
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Appellant contends
Neither Gupta nor Pinney provide a robust description of use of
the cloud, web or Internet. While Gupta discusses use of the
Internet, Gupta does so only in passing, providing very little
information about how the Internet can be incorporated into
Gupta’s system. In contrast, although the Office cites Pinney
for “higher level components including a cloud server and an
external database,” Pinney in fact makes no mention of the use
of the Internet, websites, the cloud, or the like. Pinney’s
description appears to be confined to use of an internal network.
As such, Pinney cannot be fairly cited as teaching, suggesting
or motivating modification of Gupta to include the cloud
capabilities recited in applicant’s claims.
(Appeal Br. 6).
We are not persuaded by this argument because “the test [for
obviousness] is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (C.C.P.A. 1981). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at
417. “A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” Id. at 421.
Here, Gupta teaches a package pickup system with a central computer
and “network access to the pickup location” (FF 2). Gupta teaches that the
package pickup system functions may “be distributed among two or more
computer systems . . . connected by a wired or wireless local area network,
or through the internet” (FF 9). Thus, Gupta teaches that package pickup
systems may function using a computer that provides data to other
computers over the internet as required by the phrase “cloud server” based
on our interpretation above.
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And while Pinney does not expressly discuss using the internet,
Pinney does teach “computer 124 could be remote from the unit 100 and
operate the unit 100 through an information connection, such as a network.
Further, the computer 124 is shown as dedicated to the unit” (FF 11).
Pinney further explains that this remote “computer 124 may interface with
the controller 128 to provide instructions relating the location of the selected
prescription bags 212. . . . [T]he computer 124 may prompt the touch screen
104 to display a message instructing the customer to remove the prescription
bags 212 from the dispense bin 310” (FF 21).
Pinney therefore expressly suggests a remote computer 124 that
provides information and instructions to other computers such as the
controller 128 and the touch screen 104 over an information connection like
a network (FF 11, 21).
We therefore agree with the Examiner (see Ans. 5) that it would have
been obvious to employ an internet based computer or server to connect the
networked components of Gupta and Pinney because Gupta expressly
discloses the use of the internet (FF 9). And we further agree that the
ordinary artisan at the time of the earliest priority date of March 9, 2017, for
this application would have recognized the internet as a known alternative
approach for providing data from a remote computer to another computer.9

9 Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (“[T]he
knowledge of [an ordinarily skilled] artisan is part of the store of public
knowledge that must be consulted when considering whether a claimed
invention would have been obvious.”); Dow Jones & Co. v. Ablaise Ltd.,
606 F.3d 1338, 1349 (Fed. Cir. 2010) (“[The obviousness] analysis requires
an assessment of the . . . ‘background knowledge possessed by a person
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An “[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982).
Appellant contends
Gupta and Pinney make no mention of making “the access
point positioned for all customers and height compliant with
disabled person laws and regulations.” This functional
limitation must be given weight. Gupta’s multiple storage bins
257 cannot meet this requirement. Additionally, there appears
to be no basis for concluding that Pinney’s prescription
dispense bin 310 is located at an access point positioned for all
customers and height compliant with disabled person laws and
regulations.
(Appeal Br. 7).
We find this argument unpersuasive because, in response to the
indefiniteness rejection discussed above, Appellant states “its selected
functional language is sufficient for those of skill in the art to understand the
meaning of the claim” (Reply Br. 3). Thus, if the ordinary artisan is aware
of the legal requirements for package delivery systems such as those of
claim 1, then it would have been common sense and obvious to comply with
legal requirements because “a person of ordinary skill has good reason to
pursue the known options within his or her technical grasp. If this leads to
the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.” KSR, 550 U.S. at 421.
We note that the fundamental “discovery” which this limitation
represents is the ability to use systems that comply with laws such as the

having ordinary skill in the art.’” (citing KSR, Int’l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007))).
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Americans with Disabilities Act. It is inconsistent with the Patent clause of
the U.S. Constitution to grant a patent for a “discovery” which is solely
rooted in Congressional legislation or a regulatory decision by the Justice
Department. We find that patents based upon legal regulations by Federal
Agencies or Congressional legislation are not the kind of “‘discoveries’ that
the statute was enacted to protect.” See Parker v. Flook, 437 U.S. 584, 593
(1978).
Claims 2, 5, 18, 20
Appellant contends “[i]n Gupta, it is unclear whether the system is
designed for interface with a plurality of independent interested parties.
Applicant enables these features through the use of higher lever components,
including the cloud. In view of Gupta’s deficiencies in this area, applicant
traverses and requests reconsideration” (Appeal Br. 8).
We find this argument unpersuasive. Claim 2 recites “the system
notifies an interested party via the higher level components that the
individual package has been dropped off at the facility unit body for pick-up
and records information about the drop-off in the external database via the
cloud server.”
Pinney teaches that after prescription bags have been deposited into
the system, computer controller 128 may “interface with the computer 124
to relay which trays 214 were accessed by the pharmacist or technician in
order to update the database program in the computer 124” (FF 18). Thus,
Pinney teaches the elements of claim 2 including notifying a database which
may be “a database on the pharmacy’s computer network” (FF 12). While
Pinney does not expressly state that the network may operate over the
internet, Gupta teaches the use of the internet (FF 9). As already discussed,
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we find it would have been obvious to use the internet to connect various
computer components as was well known to the person of ordinary skill at
the time the invention was made.
Claims 4 and 19
Appellant “traverses on grounds that Pinney only notifies the
pharmacy that the package has been picked up; Pinney makes no reference
to recording information about the pick-up in an external database via a
cloud server” (Appeal Br. 8).
We find this argument unpersuasive because Pinney teaches “to
update the database program in the computer 124 to ascertain an accurate
inventory of the prescription bags 212 in the unit 100” (FF 18). Pinney also
teaches the “database program in the computer 124 may then compare the
customer’s identity with the inventory of prescription bags 212 stored in the
unit 100” (FF 19). Thus, the device of Pinney tracks the presence or pick-up
of the prescription in a database that may, as discussed above, obviously be
connected using the internet based on the disclosure of Gupta and the
knowledge of the ordinary artisan.
Claims 12 and 26
Appellant disagrees with the Examiner’s finding that “the
combination of Gupta and Pinney discloses the cloud server unlocks the
package discharge access point based upon identifying information of the
customer of the particular individual package, the identifying information of
the customer obtained via the higher level components” (Appeal Br. 9).
We remain unpersuaded by this argument because Pinney and Gupta both
teach unlocking the package discharge access based upon identifying
information (see FF 5, 20). Pinney teaches “the computer 124 may prompt
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the touch screen 104 to display a message displaying the customer’s name
and requesting the customer enter a password to verify their identity” (FF
20). Pinney also teaches the “password may include a user-chosen password
or a pre-assigned PIN that is stored locally in the database program of the
computer 124 or remotely on another database program” (FF 20). Thus,
Pinney expressly suggests obtaining customer identifying information using
a remote database program in order to unlock the package discharge. We
agree with the Examiner that using an internet connection or “cloud”
computer as taught by Gupta to connect the remote database program of
Pinney would have been an obvious approach to the ordinary artisan at the
time the invention was made.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner’s
conclusion that Gupta and Pinney render the rejected claims obvious.

C. 35 U.S.C. § 103 over Gupta, Pinney, and Garson
Appellant contends, regarding claims 8 and 22, that Gupta and Pinney
“do not teach a conveyor belt system, and therefore that the claims are not
obvious over the proposed combination” (Appeal Br. 8–9).
We find this argument unpersuasive because the Examiner relies upon
Garson to teach “a conveyor belt system in the facility unit body, the
conveyor belt system configured to transport selected individual packages
between the package storage area and the package access discharge port”
(Final Act. 14; Garson ¶ 5). The Examiner finds it obvious to use a
conveyor belt as a known equivalent “method for use in a vending machine
which dispense products to customers” (id.). “Non-obviousness cannot be
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established by attacking references individually where the rejection is based
upon the teachings of a combination of references. . . . [The reference] must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986).

D. 35 U.S.C. § 103 over Gupta, Pinney, and Kashi
Appellant contends “that Gupta and Pinney lack significant portions
of the claimed invention. When yet a third reference is incorporated in order
to supply missing elements, it certainly seems to applicant that its
specification is being used to engage in hindsight reconstruction of the
claimed invention” (Appeal Br. 10).
We do not find this argument persuasive because the Examiner’s
reasoning “takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure.” In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, Gupta and Pinney
teach the limitations of claim 1 from which claims 14 and 15 depend for the
reasons given above. As to the use of insulation and cooling systems for
maintaining packages at controlled temperatures as recited by claim 14 and
temperature zones as recited by claim 15, Kashi teaches a package delivery
system with “one or more storage compartments configured to regulate a
temperature and/or a humidity level within the main housing of the storage
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compartment” that may “contain insulation to retain heat” and cool or heat
the compartment (see Kashi ¶¶ 71–74).
Therefore, while we are fully aware that hindsight bias may plague
determinations of obviousness, Graham v. John Deere Co., 383 U.S. 1, 36
(1966), we are also mindful that the Supreme Court has clearly stated that
the “combination of familiar elements according to known methods is likely
to be obvious when it does no more than yield predictable results.” KSR,
550 U.S. at 416. We agree with the Examiner that incorporation of
temperature control systems such as those of Kashi into the package systems
of Gupta and Pinney would have been obvious in order to allow receipt of
temperature sensitive packages as taught by Kashi.

SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1–30 112(b) Indefiniteness 1–30
1–7, 9–13, 16–
21, 23–30
103 Gupta, Pinney 1–7, 9–13, 16–
21, 23–30

8, 22 103 Gupta,
Pinney,
Garson
8, 22
14, 15 103 Gupta,
Pinney, Kashi
14, 15
Overall
Outcome
1–30

Appeal 2020-002911
Application 16/211,490

24

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED