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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 10 April 2026 has been entered.
Status of Claims
Claims 1, 21, and 22 have been amended.
Claim 2 has been previously cancelled.
Claim 23 has been added.
Claims 1 and 3-23 are currently pending and have been examined.
Response to Applicant's Remarks
35 U.S.C. § 101
Applicant’s remarks, see Page(s) 11-19, filed 10 April 2026, with respect to the 35 U.S.C. § 101 rejections, have been fully considered, and are not persuasive.
Applicant submits that the 101 rejections fail to consider the numerous limitations of the digital mailroom application that provide significant details regarding how the mail is processed.
Examiner respectfully disagrees, as the rejection lists out all the limitations of the claims.
Claim(s) 1, 21, and 22 recite(s) a system and series of steps for processing digital mail based on a plurality of mail delivery settings, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or managing personal behavior or relationships or interactions between people, such as, following rules or instructions. These concepts are grouped as mental processes and certain methods of organizing human activity.
The limitation(s) of, ‘receiving a list of mail recipients’; ‘receiving a list of mail delivery settings…’; ‘receiving a selection of a recipient in the list of mail recipients…’; ‘receiving a scan of the physical piece of mail…’; ‘determining which of the mail delivery settings are applicable…’; ‘routing the digital mail piece according to the plurality of mail delivery settings…’, as drafted, recite a process that, under broadest reasonable interpretation, is/are mental processes and certain methods of organizing human activity. Accordingly, the claim(s) recite(s) an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim(s) recite(s) the additional element(s) of ‘a digital mailroom application’, ‘at least one processor’, ‘an interface’, ‘a user interface’. These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘at least one processor’, ‘an interface’, ‘a user interface’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and/or a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
generally linking the use of the judicial exception to a particular technological environment or field of use (‘a digital mailroom application’).
Claim(s) 3-20 and 23 further recite(s) the system and series of steps for processing digital mail based on a plurality of mail delivery settings, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or managing personal behavior or relationships or interactions between people, such as, following rules or instructions. These concepts are grouped as mental processes and certain methods of organizing human activity.
The limitation(s) of, ‘analyzing a selected digital mail piece and…populating at least one field…’; ‘analyzing the digital mail piece to determine the recipient of the digital mail piece…’; ‘receiving the list of mail recipients and the list of mail delivery settings…’ as drafted, recite a process that, under broadest reasonable interpretation, is/are mental processes and certain methods of organizing human activity. Accordingly, the claim(s) recite(s) an abstract idea.
Applicant further submits that the claims recite a technical solution to a technical problem. Applicant submits that the Federal Circuit, in McRO, Inc. v. Bandai Namco Games America Inc., held that claims directed to automating a human process were not abstract because the claims "use a rule set in a manner unlike the prior art work performed by human artists." The digital mailroom application similarly automates a manual, error-prone process in an entirely new, machine-based way that is not a mere emulation of a human action. Here, the claimed invention improves the computer system's ability to reliably and automatically correlate physical objects to digital files, which is a specific improvement to the underlying technology of mail processing and management.
Examiner respectfully disagrees, as the claim limitations are not indicative of integration into a practical application, such as an improvement to the functioning of a computer or other technical field, as considered below in view of MPEP 2106. In particular, an improvement in the judicial exception itself is not an improvement in technology. Applicant’s improvement in this case is not an improvement to the functioning of a computer, or to any other technology or technological field. Instead, the claim limitations of the instant application are "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery" (McRO , 837 F.3d at 1314). The claims simply state improving the reliability of a mental process, such as, the observation of correlation and the evaluation of applicable mail delivery settings.
Furthermore, in the case of McRO, “the claims…generate a tangible product, namely “a video of a 3-D character speaking the recorded audio.” McRO Br. 38. …the claimed process is technological because it provides “a method for getting a computer to automatically generate video of a 3-D animated character speaking in sync with pre-recorded dialogue—without requiring an artist’s constant intermediation.” McRO Br. 42. …the claims are nonetheless patent eligible because they “effect an improvement in [a] technology or technical field,” specifically 3-D computer generated lip-synchronization. McRO Br. 43 (quoting Alice, 134 S. Ct. at 2359 (citing Diehr, 450 U.S. at 177–78)). This improvement… results from its method that “employs specific types of rules” and uses those rules in “a specific technological way.”” These are clear improvements to computer animation technology by automatically generating a video of a 3-D character speaking in sync with pre-recorded dialogue. Therefore, the claims "focus on a specific means or method that improves" computer animation technology, unlike the presented claims of the instant application.
35 U.S.C. § 103
Applicant’s remarks, see Page(s) 19-20, filed 10 April 2026, with respect to the 35 U.S.C. § 103 rejections, have been fully considered, and are persuasive, in view of the claim amendments.
The cited prior art, taken either individually or in combination with other prior art of record, fails to teach or suggest the digital mailroom application providing an interface that allows each of a plurality of the mail recipients to view, select and change at least one of the mail delivery settings corresponding to the mail recipient that will be applied to pieces of the incoming physical mail received in the future while not allowing the plurality of mail recipients to change any mail delivery setting corresponding to other mail recipients, wherein the mail delivery settings corresponding to a mail recipient that may be changed by the mail recipient using the interface include specifying to send a digital mail piece to one or more first entities based on the mail recipient and to send at least one notification to one or more second entities based on the mail recipient.
Therefore, the 35 U.S.C. § 103 claim rejections have been withdrawn.
Claim Objection Warning
Applicant is advised that should claim 1 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim(s) 1 and 3-23 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1, 21, and 22 recite(s) a system and series of steps for processing digital mail based on a plurality of mail delivery settings, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or managing personal behavior or relationships or interactions between people, such as, following rules or instructions. These concepts are grouped as mental processes and certain methods of organizing human activity.
The limitation(s) of, ‘receiving a list of mail recipients’; ‘receiving a list of mail delivery settings…’; ‘receiving a selection of a recipient in the list of mail recipients…’; ‘receiving a scan of the physical piece of mail…’; ‘determining which of the mail delivery settings are applicable…’; ‘routing the digital mail piece according to the plurality of mail delivery settings…’, as drafted, recite a process that, under broadest reasonable interpretation, is/are mental processes and certain methods of organizing human activity. Accordingly, the claim(s) recite(s) an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim(s) recite(s) the additional element(s) of ‘a digital mailroom application’, ‘at least one processor’, ‘an interface’, ‘a user interface’. These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘at least one processor’, ‘an interface’, ‘a user interface’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and/or a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
generally linking the use of the judicial exception to a particular technological environment or field of use (‘a digital mailroom application’).
Claim(s) 3-20 and 23 further recite(s) the system and series of steps for processing digital mail based on a plurality of mail delivery settings, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or managing personal behavior or relationships or interactions between people, such as, following rules or instructions. These concepts are grouped as mental processes and certain methods of organizing human activity.
The limitation(s) of, ‘analyzing a selected digital mail piece and…populating at least one field…’; ‘analyzing the digital mail piece to determine the recipient of the digital mail piece…’; ‘receiving the list of mail recipients and the list of mail delivery settings…’ as drafted, recite a process that, under broadest reasonable interpretation, is/are mental processes and certain methods of organizing human activity. Accordingly, the claim(s) recite(s) an abstract idea.
The judicial exception is not integrated into a practical application. The additional element(s) is/are recited at a high-level of generality (i.e., as generic computer components performing generic computer functions) such that they amount to no more than mere instructions to apply the exception using generic computer components. In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a receiver, and/or a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
Additionally, the claims recite(s) the additional elements of receiving and transmitting data. These limitations are recited at a high level of generality (i.e., as a general means of receiving and transmitting data), and amount to mere data transmission, which is a form of insignificant extra-solution activity. Thus, the claim(s) is/are directed to the abstract idea.
As discussed above, the additional elements amount to mere data transmission, which is a form of insignificant extra-solution activity. As detailed in MPEP 2106, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. Here, the reception and transmission of data was considered to be extra-solution activity in Step 2A, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The generic functions of receiving and transmitting data are considered to be well‐understood, routine, and conventional elements previously known to the industry, because the functions can be summarized as the generic computer functions of receiving or transmitting data over a network. This is similar to how ‘using the Internet to gather data’ was found to be a well-known, routine, and conventional function in the decision of Intellectual Ventures I LLC v. Symantec Corp. (Fed. Cir. 2015) (see MPEP 2106.05(d)(II) Elements That the Courts Have Recognized as Well-Understood, Routine, Conventional Activity in Particular Fields). Thus, these elements amount to well‐understood, routine, and conventional elements previously known to the industry, which does not add significantly more, and therefore remains insignificant extra-solution activity even upon reconsideration. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept, and therefore, the claim(s) is/are not eligible.
As analyzed above, the limitations as an ordered combination, are merely applying the abstract idea in a generic computing environment. In addition, the claims do not improve functionality of a computer or improve any other technology. Thus, claims 1 and 3-23 are ineligible as the claims do not recite additional elements which result in significantly more than the abstract idea itself.
Novelty/Non-Obviousness
The subject matter of claims 1 and 3-23 is not taught by the cited prior art and is considered novel. However, claims 1 and 3-23 remain rejected under 35 U.S.C. 101 as described above.
The closest prior art of record are Farhat (U.S. Patent App. Pub. No. 20160294758), Briggman (U.S. Patent App. Pub. No. 20130198300), Bornitz (U.S. Patent App. Pub. No. 20180253687), Lim (U.S. Patent App. Pub. No. 20070156659), Tsuruta (U.S. Patent App. Pub. No. 20150082192), Downing (U.S. Patent App. Pub. No. 20210256468), Foth (U.S. Patent App. Pub. No. 20070156416), Dearing (U.S. Patent App. Pub. No. 20120011068), and King (U.S. Patent No. 8615554).
The cited prior art, taken either individually or in combination with other prior art of record, fails to teach or suggest the digital mailroom application providing an interface that allows each of a plurality of the mail recipients to view, select and change at least one of the mail delivery settings corresponding to the mail recipient that will be applied to pieces of the incoming physical mail received in the future while not allowing the plurality of mail recipients to change any mail delivery setting corresponding to other mail recipients, wherein the mail delivery settings corresponding to a mail recipient that may be changed by the mail recipient using the interface include specifying to send a digital mail piece to one or more first entities based on the mail recipient and to send at least one notification to one or more second entities based on the mail recipient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WAYNE S MURRAY whose telephone number is (571)272-4306. The examiner can normally be reached M-F 8am-5pm.
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/Wayne S. Murray/Examiner, Art Unit 3628
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