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 .
Status of Claims
Claims 1 – 17 were previously pending and subject to a non-final office action mailed 02/13/2025. Claims 1, 6, & 16 – 17 were amended in a reply filed 08/13/2025. Claims 1 – 17 are currently pending and subject to the final office action below.
Novel / Nonobvious Subject Matter
Claims 1 – 17 are allowed over the prior art. In particular, the combination of Shipman in view of Logan fail to teach or render obvious the particular combination of elements, including the particular system architecture of a mail processing facility device and a correctional facility device, with corresponding steps of obtaining correctional facility instructions from a correctional facility device, determining downstream routing instructions based on correctional facility instructions in substantially real-time as the mail file is digitized, the storing of physical mail associated with the digitized mail file at a mail warehouse separate from the mail processing facility, selectively initiating contraband analysis only for mail allocated for physical delivery, as well as performing the contraband analysis at a contraband detection facility separate from the mail processing facility.
Response to Arguments
The claims filed 08/13/2025 have overcome the previous 35 USC 103 rejections.
Applicant’s arguments with respect to the previous rejection of the claims under 35 USC 101 have been considered but are not persuasive.
Applicant initially argues, on pp. 1 – 2, with respect to the previous rejection under 35 USC 101, that “The present claims recite rules regarding “selectively routing physical mail to the contraband detection facility only when allocated for physical delivery,” “bypassing contraband analysis for mail allocated to storage or destruction,” and/or “analyzing the correctional facility instructions and real-time processing capacity at each distributed facility.” These are not abstract results like “process mail efficiently.” They are specific technological rules for how the distributed system operates,” as in McRO.
Examiner respectfully disagrees that the instant claims are analogous to McRO, and notes that the In particular, the subject claim considered by the McRO court concerned a method for automatically animating lip synchronization and facial expressions. McRO, 837 F.3d at 1303. The McRO court concluded the subject claims did not recite an abstract idea because the computer animation improved the prior art through the use of rules, rather than artists, to set morph weights and transitions between phonemes. Id. at 1308. Thus, the claimed invention in McRO allowed for computer performance of animation steps that previously had to be performed by human animators. Id. at 1309. The subject claims in McRO used “limited rules in a process specifically designed to achieve an improved technological result” over “existing, manual 3-D animation techniques.” Id. at 1316 (emphasis added). Unlike the claims of McRO, the instant claims are not directed to rules for lip sync and facial expression animation or an improvement in computer technology. Instead, the present claims recite several rules – but these are merely mail routing instructions for the disposition of mail items – and are a part of the recited abstract idea of managing deliveries to inmates. These mail routing instructions are not directed to an improvement to the functionality of a computing device or any other technology.
Applicant next argues, on pp. 2 – 3, that “The examiner’s assertion that “a human sorter could do this” conflates a policy outcome (deliver/store/destroy) with the claimed technical means or rules of achieving it. Under McRO, the human could do it contention is not dispositive.”
Examiner finds Applicant’s argument unpersuasive, as the non-final office action mailed 02/13/2025 neither stated that “a human sorter could do this” nor did Examiner assert that where a human could perform steps is dispositive.
Applicant next argues, on pg. 3, that “the claimed pipeline improves the technology of inmate-mail processing— a real-world system combining digitization, facility-specific routing, contraband screening, artifact correlation, and distributed custody/logistics—by imposing specific, technical rules that re-time operations (at digitization), coordinate processing across facilities through identifier pairing, and condition expensive analysis on routing state” and that “the claims recite a particular technical solution that improves the field, regardless of whether they also speed up a processor.”
Examiner respectfully disagrees that the claims recite a particular technical solution that improves the field. In particular, the additional elements of computer, mail processing facility device, and correctional facility device, computing system, computing processor, memory comprising instructions, non-transitory computer readable medium comprising instructions, processor, and computational resources are recited at a high-level of generality, such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)). The additional elements of “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility, wherein the digital mail file is obtained from a mail processing facility device” and “as the mail file is digitized,” when viewed as whole/ordered combination, amounts to insignificant extra-solution activity (e.g., pre-solution activity), such as mere data gathering (See MPEP 2106.05(g)). The additional elements of “digital,” “digitized mail file,” “digital identifier,” “associated with the digitized mail file,” and “computational resources” are recited at a high-level of generality, and when viewed as whole/ordered combination, do no more than generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)). Accordingly, the above additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant next argues, on pp. 3 – 4, that “the claims do not recite an abstract idea on top of an abstract idea.”
Examiner finds Applicant’s argument unpersuasive, as the non-final office action mailed 02/13/2025 did not assert that “recite an abstract idea on top of an abstract idea.” Rather, Examiner “determine{d} whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas,” as stipulated in MPEP § 2106.04(a).
Applicant next argues, on pp. 4 – 5, that “The Office has provided no evidence that this ordered combination—real-time digitization-time routing, identifier-paired artifact correlation, state-dependent contraband gating, and distributed custody/logistics logging—was well-understood, routine, and conventional at the relevant time.”
Examiner respectfully disagrees, as Examiner has complied with the requirements set for as per the Berkheimer Memo – specifically, Section (III.)(A.)(2.) on page 4, which states “A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” As per this type of evidence, Examiner noted on pg. 6 in the non-final office action mailed 02/13/2025: “…the extra-solution functionality of “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility” has been found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting: “Transmitting data over a network” and “Electronically scanning or extracting data from a physical document”), and thus do not amount to significantly more under Step 2B.” Thus, Examiner asserts that the Office complied with the Berkheimer Memo requirements for evidence of particular elements being well-understood, routine, and conventional, and that the rejection under 35 USC § 101 is proper.
Claim Objections
Claim 1, 16, & 17 are objected to because of the following informalities: the limitation “digital mail file” is recited in the first (“receiving”) step, instead of “digitized mail file.” Appropriate correction is required.
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 – 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1 – 15 are directed to a method (i.e., a process). Claim 16 is directed to a machine (i.e., system). Claim 17 is directed to a product. Therefore, claims 1 – 17 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claims 1, 16, & 17 substantially recite: receiving… mail routing data, the routing data comprising instructions associated with delivery and/or storage of the… associated physical postal mail, wherein the… mail routing data is obtained from a mail processing facility…; generating at least one mail identifier, the mail identifier comprising… a physical identifier, the at least one mail identifier operable to be attached to the… mail and/or the physical postal mail; obtaining correctional facility instructions, the correctional facility instructions indicating restrictions and/or requirements associated with the delivery of physical mail to an inmate of the correctional facility, wherein the correctional facility instructions are obtained from a correctional facility…, wherein the correctional facility is separate from the mail processing facility; determining downstream routing instructions based on correctional facility instructions, in substantially real-time… the downstream routing instructions comprising an indication that the physical mail… should be allocated for physical delivery to the inmate, storage at a mail warehouse separate from the mail processing facility, and/or destruction; selectively initiating contraband analysis only for mail allocated for physical delivery, thereby reducing… processing resources; receiving contraband analysis results data for mail allocated for physical delivery to the inmate, the contraband analysis results data providing an indication that the physical mail is free of contraband or contains contraband, wherein the contraband analysis is performed at a contraband detection facility separate from the mail processing facility; storing and logging chain of custody data for mail identified as containing contraband; obtaining and logging mail forwarding data, the mail forwarding data comprising information associated with the physical delivery of the postal mail; and obtaining and logging mail tracking and receipt data, the mail tracking and receipt data comprising information associated with the delivery of the physical mail to the intended inmate and/or facility.
The limitations stated above are processes that, under the broadest reasonable interpretation, covers performance of the limitation in a business relation or commercial interaction. That is, the functions in the context of this claim encompass managing deliveries to inmates. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a commercial interaction, or while managing personal behavior or relationships or interactions between people, then it falls within the "Certain Methods of Organizing Human Activity" grouping of abstract ideas e.g., “commercial or legal interactions (including marketing or sales activities or behaviors; business relations, and following rules or instructions).” Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claims 1, 16, & 17, as a whole, amounts to: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment. Claim 1 recites the additional computer-related element of: computer, mail processing facility device, and correctional facility device. Claim 16 recites the additional computer-related elements of: computing system, computing processor, memory comprising instructions, mail processing facility device, and correctional facility device. Claim 17 recites the additional computer-related elements of: non-transitory computer readable medium comprising instructions, processor, computer, mail processing facility device, and correctional facility device. In addition, claims 1, 16, & 17 recites the additional elements of: “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility, wherein the digital mail file is obtained from a mail processing facility device,” “digital,” “digitized mail file,” “digital identifier,” “as the mail file is digitized,” “associated with the digitized mail file,” and “computational resources.”
The additional elements of computer, mail processing facility device, and correctional facility device, computing system, computing processor, memory comprising instructions, non-transitory computer readable medium comprising instructions, processor, and computational resources are recited at a high-level of generality, such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
The additional elements of “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility, wherein the digital mail file is obtained from a mail processing facility device” and “as the mail file is digitized,” when viewed as whole/ordered combination, amounts to insignificant extra-solution activity (e.g., pre-solution activity), such as mere data gathering (See MPEP 2106.05(g)).
The additional elements of “digital,” “digitized mail file,” “digital identifier,” “associated with the digitized mail file,” and “computational resources” are recited at a high-level of generality, and when viewed as whole/ordered combination, do no more than generally link the use of the judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)).
Accordingly, the above additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, claims 1, 16, & 17 are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment, and do not provide integration of the recited abstract ideas into a practical application. The same analysis applies here in Step 2B, i.e., (i) merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)); and (ii) adding insignificant extra-solution activity (e.g., pre-solution activity, such as mere data retrieval / electronic scanning) to the judicial exception (See MPEP2106.05(g)), as well as (iii) generally linking the recited judicial exception to a particular technological environment or field of use (See MPEP 2106.05(I)(A) & MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Furthermore, the extra-solution functionality of “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility, wherein the digital mail file is obtained from a mail processing facility device” and “as the mail file is digitized” has been found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting: “Transmitting data over a network” and “Electronically scanning or extracting data from a physical document”), and thus do not amount to significantly more under Step 2B.
Therefore, the additional elements of computer, mail processing facility device, and correctional facility device, computing system, computing processor, memory comprising instructions, non-transitory computer readable medium comprising instructions, processor, and computational resources, “receiving a digitized mail file, the mail file comprising a digital representation of physical postal mail sent to an inmate of a correctional facility, the mail file generated by digitizing the postal mail at a mail processing facility, wherein the digital mail file is obtained from a mail processing facility device,” “as the mail file is digitized,” “digital,” “digitized mail file,” “digital identifier,” “associated with the digitized mail file,” and “computational resources,” as recited in claims 1, 16, & 17, fail to integrate the recited abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. There is no indication that the combination of elements, taken both individually and as an ordered combination, improves the functioning of a computer or improves any other technology. Thus, the claims are not patent eligible.
Furthermore, dependent claims 2 – 15 are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The additional elements of “PDF format, PNG format, JPEG format, GIF format” in claim 2 amounts to generally linking the use of the judicial exception to a particular technological environment (See MPEP 2106.05(h)).
The limitations of the claims, when considered both individually and as an ordered combination, do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with generic computer components that conduct generic computer functions within a certain field of use, and thus are ineligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRYAN J KIRK whose telephone number is (571)272-6447. The examiner can normally be reached Monday -Friday 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon Campbell can be reached at (571)272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN J KIRK/Examiner, Art Unit 3628
/SHANNON S CAMPBELL/Supervisory Patent Examiner, Art Unit 3628