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 final office action mailed 11/20/2025. Claims 1 & 16 – 17 were amended in a reply filed 05/20/2026. Claims 1 – 17 are currently pending and subject to the non-final office action below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed after final rejection on 05/20/2026 has been entered.
Response to Arguments
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 claims do not recite a method of organizing human activity because the claimed “limitations define a distributed system that controls interactions between multiple devices and facilities, rather than a human activity such as an economic practice or interpersonal interaction. The claims recite machine-executed operations governing real-time coordination of physical and digital workflows.”
Examiner respectfully disagrees. In particular, the claims recite the following judicial exception: “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.” These limitations 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. The computing devices and mail digitization mentioned in Applicant’s remarks are treated as additional elements, which are analyzed as per Step 2A, Prong Two and Step 2B as outlined below.
Applicant’s arguments regarding McRO, on pp. 2 – 3, have been addressed in the office action mailed on 11/20/2025 (see pg. 3).
Applicant next argues, on pg. 3, that the “improvements are rooted in technology and are implemented through the claimed system architecture and processing steps.”
Examiner respectfully disagrees that the instant invention is rooted in technology, as the recited computing devices are merely generically-recited computers performing generic computer functions. Implementing an abstract idea on a generic computer does not integrate the abstract idea into a practical application in Step 2A Prong Two or amount to significantly more in Step 2B.
Applicant next argues, on pg. 3 – 4, that the “rejection does not provide evidence that” a configuration of “a coordinated system in which multiple facility devices interact to perform digitization, routing, detection, storage, and delivery operations under real-time control” “is well-understood, routine, or conventional.”
Examiner respectfully notes that the previous office actions did not assert that the above-cited configuration is well-understood, routine, or conventional. Rather, the previous and current 101 rejection state that ““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.”
Applicant next argues, on pg. 3, that “the limitation requiring selective initiation of contraband analysis only for mail allocated for physical delivery represents a specific technological improvement” “alters how detection resources are used, reduces unnecessary processing, and improves system efficiency.”
Examiner respectfully notes that the functionality cited in Applicant’s argument is a part of the recited judicial exception, and was not deemed to be well-understood, routine, and conventional activity. Examiner further notes that, as per MPEP 2106.05(a), “if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.” Applicant has not pointed to any evidence of the above-mentioned selective contraband analysis being directed to an improvement in the functionality of a computing device or any other technology. Therefore, this step is a part of the abstract idea and does not amount to significantly more.
Applicant next argues, on pp. 4 – 5, regarding the declaration submitted on 05/20/2026, that it is not well-understood, routine, or conventional to perform the following functions: “determine downstream handling instructions for physical inmate mail in substantially real time as the mail was being digitized based on correctional facility-specific delivery requirements obtained from a separate correctional facility system,” “selectively initiate contraband analysis only for physical mail specifically allocated for physical delivery, rather than applying screening according to fixed or broadly applicable procedural workflows,” “to coordinate mail processing across separate systems in which a mail processing facility generated a digital representation of physical mail, a separate correctional facility system provided delivery constraints, and a separate contraband detection process was selectively engaged based on dynamically generated routing determinations,” or “maintaining coordinated association between digitized mail files and corresponding physical mail items through identifiers supporting downstream routing, tracking, and delivery management.”
Examiner respectfully notes that the previous office actions did not assert that the above-cited functionally is well-understood, routine, or conventional. Examiner further notes that none of the recited functions listed in Applicant’s argument – other than digitizing mail – is directed to an improvement in the functionality of a computing device or any other technology. Rather, these steps – other than digitizing mail – are a part of the recited judicial exception of managing incoming mail.
As per MPEP 2106.05(a), the courts have indicated that the following elements may not be sufficient to show an improvement in computer-functionality: “Recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications, 823 F.3d at 611-12, 118 USPQ2d at 1747,” “Affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed, Secured Mail Solutions, LLC v. Universal Wilde, Inc., 873 F.3d 905, 910-11, 124 USPQ2d 1502, 1505-06 (Fed. Cir. 2017).”
Examiner further notes that, as cited by the Court in Enfish, “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea.” See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, the plain focus of the claims is not to an improvement to computer functionality itself, but “on economic or other tasks for which a computer is used in its ordinary capacity” (e.g., to “improve the performance and efficiency of content delivery to inmates while eliminating contraband” as described in the instant specification at [0005]). The instant claims are directed to a method of organizing human activity, which invokes generic computer components as a mere tool for implementation, rather to an improvement thereof. For example, the claims are not directed to an improvement in the functionality of a computing device or other technology; thus, the claims are directed to a judicial exception without significantly more, and the 101 rejection is maintained.
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
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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/BRYAN J KIRK/Examiner, Art Unit 3628
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