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 .
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 an abstract idea without significantly more. In the instant case, claim 1 is directed to an “apparatus”. Claim 1 is directed to the concept of “processing mail” which is grouped under “organizing human activity… commercial interactions (processing mail and providing notification as well as follow up is similar to sales activities or behaviors and business relations such as email marketing, email, the function of the postal service or a third party delivery service) and managing personal behavior or interactions between people (following rules or instructions is similar to directing a worker to take certain actions concerning the received mail)” in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance). Claim 1 recites the digital mailroom processing incoming physical mail and generating a plurality of digital mail pieces corresponding to the incoming physical mail, the digital mailroom providing an electronic notification for a selected digital mail piece that provides access to a menu that includes a plurality of instructions to a mailroom processing the incoming physical mail, wherein when a recipient of the electronic notification selects one of the plurality of instructions on the menu, the digital mailroom sends the selected one instruction to a worker in the mailroom to perform corresponding processing for a physical mail piece corresponding to the selected digital mail piece for which the corresponding electronic notification was sent. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance). This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as a processor, a memory, and a digital application represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of processing mail.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of processing mail using computer technology (e.g. a processor and a memory). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2-8, 10-13, and 15-21 do not remedy the deficiencies of the independent claims and are rejected accordingly. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application. In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 14-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farhat US 2016/0294758.
As per claim 14:
Farhat discloses an apparatus comprising: at least one processor (¶ [0049]);
a memory coupled to the at least one processor (¶ [0049]);
a document repository in a document management system (¶ [0024]); and a digital mailroom application residing in the memory and executed by the at least one processor, the digital mailroom application processing incoming physical mail and generating a plurality of digital mail pieces corresponding to the incoming physical mail, the digital mailroom application storing each of the plurality of digital mail pieces in corresponding user personal mail spaces in the document repository (¶¶ [0024]-[0025]), wherein each user personal mail space corresponds to a user of the document management system and a recipient of at least one of the plurality of digital mail pieces (¶¶ [0024]-[0025]).
As per claim 15:
Farhat further discloses the apparatus of claim 14 wherein the document repository is a cloud-based document repository (¶ [0026], Fig 3).
As per claim 16:
Farhat further discloses the apparatus of claim 14 wherein the document management system provides a plurality of functions with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the document repository, wherein the plurality of functions comprises version control (¶¶ [0040]-[0041], [0025]).
As per claim 17:
Farhat further discloses the apparatus of claim 14 wherein the plurality of functions comprises access control (¶¶ [0040]-[0041], [0025]).
As per claim 18:
Farhat further discloses the apparatus of claim 14 wherein the plurality of functions comprises ethical walls and legal holds (¶¶ [0006], [0038]).
As per claim 19:
Farhat further discloses the apparatus of claim 14 wherein the plurality of functions comprises mobility functions that allow digital mail pieces stored in the user personal mail space of a user to be accessed by the user using a mobile device (¶ [0039]).
As per claim 20:
Farhat further discloses the apparatus of claim 14 wherein the plurality of functions comprises governance and compliance (¶¶ [0006], [0038]).
As per claim 21:
Farhat further discloses the apparatus of claim 14 wherein the plurality of functions comprises at least one search tool for allowing a user to search digital mail pieces stored in the user personal mail space of the user (¶¶ [0040]-[0041]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farhat US 2016/0294758 in view of Rauh US 2014/0136632.
As per claim 1:
Farhat discloses an apparatus comprising: at least one processor (¶ [0049]);
a memory coupled to the at least one processor (¶ [0049]); and
a digital mailroom application residing in the memory and executed by the at least one processor (¶¶ [0024]-[0025]), the digital mailroom application processing incoming physical mail and generating a plurality of digital mail pieces corresponding to the incoming physical mail (¶¶ [0024]-[0025]), the digital mailroom application providing an electronic notification for a selected digital mail piece that provides access to a menu that includes a plurality of instructions to a mailroom processing the incoming physical mail (¶ [0035]-[0037], Fig 3, [0041]-[0043]),
Farhat fails to explicitly disclose but Rauh does disclose wherein when a recipient of the electronic notification selects one of the plurality of instructions on the menu, the digital mailroom application sends the selected one instruction to a worker in the mailroom to perform corresponding processing for a physical mail piece corresponding to the selected digital mail piece for which the corresponding electronic notification was sent (¶¶ [0090]-[0101], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 2:
Farhat further discloses the apparatus of claim 1 wherein the plurality of instructions comprises an instruction to fix at least one aspect of an image in the digital mail piece (¶ [0035]-[0037], Fig 3, [0041]-[0043]).
As per claim 3:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 1 wherein the plurality of instructions comprises an instruction to open an envelope of the physical mail piece and scan contents of the envelope (¶¶ [0090]-[0100], Fig 4).
As per claim 4:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 1 wherein the plurality of instructions comprises an instruction regarding handling of the physical mail piece corresponding to the selected digital mail piece (¶¶ [0090]-[0100], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 5:
Farhat further discloses the apparatus of claim 1 wherein the electronic notification further comprises a notes field that allows the recipient to type notes regarding the selected one instruction (¶ [0035]-[0037], Fig 3, [0041]-[0043]).
As per claim 6:
Farhat further discloses the apparatus of claim 1 wherein the notification further comprises a link to the selected digital mail piece in a repository (¶ [0039] see also [0024]-[0024]).
As per claim 7:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 1 wherein the notification further comprises a thumbnail of a first page of the selected digital mail piece (¶¶ [0078]-[0080], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 8:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 1 wherein the digital mailroom application comprises a hub application that receives the selected one instruction and sends the selected one instruction to the worker in the mailroom (¶ [0101]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 9:
Farhat discloses an apparatus comprising: at least one processor (¶ [0049]); a memory coupled to the at least one processor (¶ [0049]); and
a digital mailroom application residing in the memory and executed by the at least one processor, (¶¶ [0024]-[0025])the digital mailroom application processing incoming physical mail and generating a plurality of digital mail pieces corresponding to the incoming physical mail (¶¶ [0024]-[0025]), the digital mailroom application providing an electronic notification for a selected digital mail piece that comprises: a link to the selected digital mail piece in a repository (¶ [0039] see also [0024]-[0024]); a; and access to a menu that includes a plurality of instructions to a mailroom processing the incoming physical mail (¶ [0035]-[0037], Fig 3, [0041]-[0043]),
Farhat fails to explicitly disclose but Rauh does disclose thumbnail of a first page of the selected digital mail piece (¶¶ [0078]-[0080], Fig 4);
wherein when a recipient of the electronic notification selects one of the plurality of instructions on the menu in the electronic notification, the digital mailroom application sends the selected one instruction to a worker in the mailroom to perform corresponding processing for a physical mail piece corresponding to the selected digital mail piece for which the corresponding electronic notification was sent (¶¶ [0090]-[0101], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 10:
Farhat further discloses the apparatus of claim 9 wherein the plurality of instructions comprises an instruction to fix at least one aspect of an image in the digital mail piece (¶ [0035]-[0037], Fig 3, [0041]-[0043]).
As per claim 11:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 9 wherein the plurality of instructions comprises an instruction to open an envelope of the physical mail piece and scan contents of the envelope (¶¶ [0090]-[0100], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 12:
Farhat fails to explicitly disclose but Rauh does disclose the apparatus of claim 9 wherein the plurality of instructions comprises an instruction regarding handling of the physical mail piece (¶¶ [0090]-[0100], Fig 4).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include the features as taught in Rauh in Farhat since the claimed invention is merely a combination of old elements, and in combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. Both are in the art of mail processing and it would have been obvious to a person skilled in the art to combine the art in order to improve sorting and processing of the mail.
As per claim 13:
Farhat further discloses the apparatus of claim 9 wherein the electronic notification further comprises a notes field that allows the recipient to type notes regarding the selected one instruction (¶ [0035]-[0037], Fig 3, [0041]-[0043]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nair US 2017/0195268 Barton US 2018/0039607 Reedy US 2014/0223573 Briggman US 2013/0198300 Briggman US 2023/0162132 Bornitz US 2018/0253687
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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/DAVID P. SHARVIN/
Primary Examiner
Art Unit 3692
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692
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