DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first
inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 7/1/2026 have been fully considered but they are not persuasive.
Applicant did not address the Double Patenting Rejection. The rejection is maintained.
In response to Applicant’s argument 112 1st paragraph. The Specification uses “delivery point” to refer to different things in different places, so that it does not contain a written description of the invention, in such full, clear, concise, and exact terms. Applicant’s remarks merely alleges that a POSITA would understand th term and it is clearly defined and well-understood by those of skill in the art, yet fails to define the term.
Paragraph 58 describes the problems with the current systems, that being OCR is time and resource intensive and does not define “delivery points”. As the Examiner reads this paragraph, the implied definition is the full address of the destination address, such as “600 Dulaney St, Alexandria, VA 22314” in text. Does Applicant agree to this definition?
Paragraphs 64 and 103 defines delivery point information as synonymous with geographical area information, which comprises state, city, street and street number (see paragraph 7). Based on this delivery point information is a subset of delivery points, which appears to be consistent with paragraph 58.
Paragraph 65 and Applicant’s own argument regarding paragraph 65 (“This sentence means that a database stores images of addresses, or stores images of delivery points. And it implies that addresses and delivery points may be the same thing.”). Based on that definition a delivery point is an image. It should be noted that this definition is not consistent with claim 1 and claim 2 where the delivery point data is OCR’d from an image.
Paragraph 86 could be understood to mean that the delivery point is an image of the full destination address.
Paragraph 87 defines metadata as “delivery point information”. Based on this definition delivery point information does not even have to be in the image.
In response to Applicant’s arguments 112 2nd, claim 2 appears to define “delivery points” as text (determined through OCR), however the specification appears to define it in multiple ways : Paragraph 64 – geographical area information; Paragraph 86 -writing on the item; as well as Paragraph 87 – metadata.
In response to Applicant’s arguments 101, the rejection clearly refers to the training step as NOT part of the mental process, but directed to an additional element without being significantly more, which is a generic computer component recited at a high level of generality and is well-understood, routine and conventional. See MPEP 2106.05(d). See 101 rejection for suggestions.
The Prior Art rejection is withdrawn. Applicant’s first argument was persuasive.
No Prior Art reads on the claims as currently written. The claims remain rejected under 35 USC 101, 112 1st and 2nd paragraph and under Double Patenting.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11908220. Although the claims at issue are not identical, they are not patentably distinct from each other because other than the single vs double database, they recite similar limitations.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. Claim 1 recites:
“an image database comprising delivery information of a plurality of distribution items, the image database including images and corresponding delivery points for the plurality of distribution items; and “, which is directed to an additional element which is a generic computer component recited at a high level of generality and is well-understood, routine and conventional. See MPEP 2106.05(d)
“one or more processors in data communication with the image database, wherein the one or more processors are configured to :” , which is directed to an additional element which is a generic computer component recited at a high level of generality and is well-understood, routine and conventional. See MPEP 2106.05(d)
“identify a first geographical area; “which is directed to a mental process. For example a person can identify a state or geographic area by simple observation/identification. See MPEP2106.04(a)(2).
“identify a first set delivery information in the image database, the first set of delivery information comprising images and corresponding delivery points for items of the plurality of items that were delivered to delivery points within the identified first geographical area; “, which is directed to a mental process. For example a person can identify/select from a list of items associate with a given geographic area (state) mentally. See MPEP2106.04(a)(2).
“train, using the images of the first set of delivery information, one or more machine learning models to recognize a first geographical area component corresponding to the identified first geographical area; “, which is directed to an additional element which is a generic computer component recited at a high level of generality and is well-understood, routine and conventional. See MPEP 2106.05(d).
“identify a second geographical area which is within the first geographical area;” , which is directed to a mental process. For example a person can identify a city within a state or geographic area by simple observation/identification. See MPEP2106.04(a)(2).
“identify from the first set of delivery information, a second set of delivery information, the second set of delivery information comprising images and corresponding delivery points for items of the plurality of items that were delivered to delivery points within the identified second geographical areas” , which is directed to a mental process. For example a person can identify/select from a list of items associate with a given geographic area (city) mentally. See MPEP2106.04(a)(2).
“train, using the images of the second set of delivery information, the one or more machine learning models to recognize a second geographical area component corresponding to the identified second geographical area.”, which is directed to an additional element which is a generic computer component recited at a high level of generality and is well-understood, routine and conventional. See MPEP 2106.05(d).
This judicial exception is not integrated into a practical application. As explained above, The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 11 is rejected under similar grounds as claim 1.
The Examiner recognizes the improvement of 2ms vs 100ms improvement in speed, shown in paragraphs 63-64 and 122. But how this improvement was accomplished using non-conventional techniques was not specifically claimed. The Examiner recommends the following suggestions:
1) Incorporate some type of physical machine which physically sorts mail based on the neural network (practical application). See paragraph 55-58.
2) Incorporate non-conventional training architecture, such as done in the parent case. OR
3) Incorporate an inference limitation with the specific improvement (without OCR).
Claims 2-10 and 12-20 are rejected as failing to cure deficiencies of the base claim.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “delivery points”.
Paragraph 64 recites “automatically recognizing geographical area information, such as delivery point information, on an item without using an OCR process.”, this defines delivery point information as “geographical area information” which comprises a state, a city, a street, and a street number(see paragraph 7)
Paragraph 65 recites “A distribution network, such as the USPS can generate a database, repository or vast store of images of addresses or delivery points on items,”, which defines delivery points as images of addresses.
Paragraph 86 recites “. In some embodiments, the image from the optical scanner 210 may have been subjected to an OCR process in order to recognize or interpret writing, letters, words, numbers, etc., thereon, such as a delivery point, return address, etc.”, which defines delivery point as writing, letters, words, numbers etc.
Paragraph 87 recites “This may occur by performing an OCR process on the received or retrieved image, or may be done by obtaining the image and reading metadata thereof which includes delivery point information, or by reading delivery point information associated with the image”, which defines metadata as delivery point information .
Paragraph 103 recites “. To generate the large number of images, an automated system can automatically generate a large number of images depicting known geographical area information, such as delivery point information.” this defines delivery point information as “geographical area information” which comprises a state, a city, a street, and a street number(see paragraph 7)
Due to the multiple definitions of delivery point, a POSITA would not recognize what Applicant has invented.
Claim 11 is rejected under similar grounds as claim 1.
Claims 2-10 and 12-20 are rejected as dependent upon a rejected claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “delivery point”. The specification appears to have multiple definitions of the term “delivery point”. When the claim recites “delivery point” it is not clear which definition applicant is intending. Does delivery point mean the complete address, an element of the address or an image of the complete/partial address. See 112 1st rejection above.
Claim 11 is rejected under similar grounds as claim 1.
Claims 2-10 and 12-20 are rejected as dependent upon a rejected claim.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GANDHI THIRUGNANAM whose telephone number is (571)270-3261. The examiner can normally be reached M-F 8:30-5PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sumati Lefkowitz can be reached at 571-272-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GANDHI THIRUGNANAM/ Primary Examiner, Art Unit 2672
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