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 20 January 2026 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues the Examiner’s characterization of the claims is in clear error, but the Examiner disagrees because the USPTO guidelines and the MPEP have been followed. Applicant argues on pages 12-14 of the Remarks that the Examiner’s analysis is defective and the limitations are similar to McRo. The Examiner disagrees because 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 (MPEP 2106) and the improvement is in the abstract idea or processing mail. The specification [0103] identifies the work in the mailroom can then take the requested corrective action, which is illustrative of the improvement being realized by the work and the improvement is not in the system as claimed. Applicant argues on pages 14-16 that under step 2B the claim amounts to significantly more as improvements to another technology or technical field and adding a specific limitation other than what is well-understood, routine, and conventional in the field. Applicant further argues the solution is technology based similar to DDR Holdings, but the Examiner disagrees because the facts are not similar to DDR beyond the field of computing or using computers. The Applicant argues the claim limitations not taught in the prior art is indicative of limitations that are not well understood routine or conventional in the art, but 102 and 103 analysis is not the same as the 101 analysis, see MPEP 2106.05(d). Elements that have been recognized as well-understood, routine and conventional include receiving or transmitting data over a network, electronic recordkeeping, storing and retrieving information in memory, and electronically scanning or extracting data from a physical document.
Applicant’s arguments, see page 16, filed 20 January 2026, with respect to the 102(A)(1) rejection have been fully considered and are persuasive. The 102(a)(1) rejection of 22 August 2025 has been withdrawn. New grounds of rejection are presented below.
Applicant’s arguments, see page 18, filed 20 January 2026, with respect to 103 rejection have been fully considered and are persuasive. The 103 rejection of 22 August 2025 has been withdrawn. New grounds of rejection are presented below.
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 1-12, 14, and 17-22 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, wherein the plurality of instructions comprises an instruction to fix at least one aspect of an image in the digital mail piece by re-scanning a page of the physical mail piece corresponding to the digital mail piece. Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance). Additionally, mere instructions to implement the abstract idea or instructions to direct a human actor to perform actions are similar to following rules or instructions and providing instructions to people. 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 ‘apply it’ or mere instructions to implement an abstract idea on a computer 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, 10-12, and 17-22 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. Providing further instructions or options for a user of the application to select do not provide an improvement to computer functionality or improvement to another technology and amount to mere instructions to implement the abstract idea on a computer (MPEP 2106.05(f) as in claims 2-8, and claims 10-12. Providing access controls (claims 14, 17, 22) is considered extra solution activity but also track changes and access controls for digital documents was introduced to software such as Microsoft Word in 1986 and has been used in all types of software including Adobe, Excel, and numerous other applications. Providing ethical walls and complying with regulations (claims 18-20 and 22) is required by law in many instances and is insignificant extra solution activity that is required in the analog world as well as the digital world so that instating a digital compliance to ethical or legal rules would be obvious and required by digital or analog methods. 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 § 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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farhat US 2016/0294758 in view of Rauh US 2014/0136632 in further view of Churchill US 7446892.
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.
Farhat fails to explicitly disclose but Churchill does disclose wherein
the plurality of instructions comprises an instruction to fix at least one aspect of an image in the digital mail piece by re-scanning a page of the physical mail piece corresponding to the digital mail piece (col. 14 lines 17-31) 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 Churchill 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. Churchill states the various document preparation steps can be performed manually or automatically (col. 10 lines 5-10) and the system of Churchill automatically determines bad images, so it would be obvious to one having ordinary skill in the art to provide additional feedback in Farhat (¶ [0035]-[0037], Fig 3, [0041]-[0043]) to include bad or poor image quality requiring rescanning of the document page such as the generation of the report directing the rescan of any bad images of the electronic document as taught in Churchill.As per claim 2: Farhat fails to explicitly disclose but Churchill does disclose the apparatus of claim 1 wherein the instruction to fix at least one aspect of an image in the digital mail piece comprises an instruction that specifies re-scanning less than all pages of the physical mail piece corresponding to the digital mail piece (col. 14 lines 17-31).
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 Churchill 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. Churchill states the various document preparation steps can be performed manually or automatically (col. 10 lines 5-10) and the system of Churchill automatically determines bad images, so it would be obvious to one having ordinary skill in the art to provide additional feedback in Farhat (¶ [0035]-[0037], Fig 3, [0041]-[0043]) to include bad or poor image quality requiring rescanning of the document page such as the generation of the report directing the rescan of any bad images of the electronic document as taught in Churchill.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). 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 4: Farhat further discloses the apparatus of claim 1 wherein the plurality of instructions comprises an instruction regarding routing of the physical mail piece corresponding to the selected digital mail piece to a person who is not the recipient of the digital mail piece (¶ [0035] “even if an item of mail may only be addressed to a particular individual user, the organizational parameters may be set to share all items of mail on a particular project with an identified team of users. The system may also be set to route an item via email and also into an automated work process such as an accounts payable processing system.”).
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]); and access to a menu that includes a plurality of instructions to a mailroom processing the incoming physical mail and a notes field that allows the recipient to type notes regarding a selected instruction (¶ [0035]-[0037] “The machine learning algorithms 135 may incorporate feedback from users. For example, the system can allow the user to mark that the mail was incorrectly addressed, and can return the mail item for another attempt at addressing by the system. Various options can be presented to a user, such as “re-classify”, “forward”, and “route” in the native application. Alternatively, or in addition, the system can be set to record when an email with a mail item attachment was forwarded by the user directly to another user, process, or group, and can learn over time to automatically address or forward similar items. The system can search the forwarding emails for text such as “not mine” or “sent incorrectly” or any suitable wording, so that it can learn from mistakes.”, Fig 3, [0041]-[0043]), wherein the 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.
Farhat fails to explicitly disclose but Churchill does disclose wherein the plurality of instructions comprises an instruction to fix at least one aspect of an image in the digital mail piece by re-scanning a page of the physical mail piece corresponding
to the digital mail piece (col. 14 lines 17-31)
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 Churchill 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. Churchill states the various document preparation steps can be performed manually or automatically (col. 10 lines 5-10) and the system of Churchill automatically determines bad images, so it would be obvious to one having ordinary skill in the art to provide additional feedback in Farhat (¶ [0035]-[0037], Fig 3, [0041]-[0043]) to include bad or poor image quality requiring rescanning of the document page such as the generation of the report directing the rescan of any bad images of the electronic document as taught in Churchill.As per claim 10: Farhat fails to explicitly disclose but Churchill does disclose the apparatus of claim 9 wherein the instruction to fix at least one aspect of an image in the digital mail piece comprises an instruction that specifies re-scanning less than all pages of the physical mail piece corresponding to the digital mail piece (col. 14 lines 17-31).
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 Churchill 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. Churchill states the various document preparation steps can be performed manually or automatically (col. 10 lines 5-10) and the system of Churchill automatically determines bad images, so it would be obvious to one having ordinary skill in the art to provide additional feedback in Farhat (¶ [0035]-[0037], Fig 3, [0041]-[0043]) to include bad or poor image quality requiring rescanning of the document page such as the generation of the report directing the rescan of any bad images of the electronic document as taught in Churchill.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 further discloses the apparatus of claim 9 wherein the plurality of instructions comprises an instruction regarding routing of the physical mail piece to a person who is not the recipient of the digital mail piece (¶ [0035] “even if an item of mail may only be addressed to a particular individual user, the organizational parameters may be set to share all items of mail on a particular project with an identified team of users. The system may also be set to route an item via email and also into an automated work process such as an accounts payable processing system.”).
Claim(s) 14, and 17-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farhat US 2016/0294758 in view of Lim US 2007/0156659.
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 cloud-based document repository in a document management system (¶ [0026], Fig 3); 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 cloud-based document repository (¶¶ [0024]-[0026]), 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, 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 cloud based document repository, (¶¶ [0024]-[0025]).
Farhat fails to explicitly disclose but Lim does disclose wherein the plurality of functions comprises version control that maintains all versions of a document, including past versions, with a corresponding history of who changed the document when (¶ [0146], [0723] “the amount of data to collect may be controlled by a configuration associated with a policy enforcer or data collection agent. Information usage data may be presented or gathered at different levels of granularity. For example, information usage data may be at the file level for operations such as open, close, save, delete, rename, print, change a file attribute, or others. Information usage data may be at a finer level of granularity where operations within an application program can be tracked or logged. Examples of this finer level of granularity include cut and paste, drag and drop, editing a region in a document, changing a document header, editing a cell in a spreadsheet, editing a formula in a cell, using an instant messenger program to connect to another user, sending an e-mail message, forwarding an e-mail message, attaching a document to an e-mail, or other similar operation. These operations may be logged or tracked.”) 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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]). As per claim 17: Farhat fails to explicitly disclose but Lim does disclose the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further comprises access control that defines credentials for users that determine who is able to access a document, wherein the access control allows specifying view access and full edit/delete access (¶¶ [0152], [0219]-[0221] “access control”).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).As per claim 18: Farhat fails to explicitly disclose but Lim does disclose the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further comprises ethical walls that define specific entities or persons that can access certain documents as well as other specific entities or persons who are not allowed to access the documents and legal holds that specify senders, clients or matters for which there is a legal hold due to impending or pending litigation (¶¶ [0509]-[0510] “ethical wall”).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).
As per claim 19: Farhat further discloses the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further 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]).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).As per claim 20 Farhat fails to explicitly disclose but Lim does disclose the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further comprises governance that specifies retention policies for the digital document and corresponding paper document, tracking of who has reviewed the document, and tracking the location of the physical document and compliance that specifies how documents in the cloud-based document repository are handled and maintained to assure compliance with any applicable regulations, including government regulations (¶ [0146], [0723], [0418] “Archiving an e-mail message. An application of such is regulatory compliance where all executive e-mail communication should be archived. (2) Sending notification, such as when a critical document is being accessed, then sending an e-mail to a document administrator. (3) Encrypting message before transmission. The application can be security or regulatory compliance. HIPPA requires certain communications to certain people be encrypted.”, [0352] “Archive instructs the system to archive information. For example, for particular e-mails, they may need to be archived for compliance with securities or other laws”, [0126] “auditing or compliance”).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).As per claim 21: Farhat further discloses the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further 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]).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).
As per claim 22: Farhat further discloses the apparatus of claim 14 wherein the plurality of functions provided by the document management system with respect to the digital mail pieces stored in the corresponding user personal mail spaces in the cloud-based document repository further 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]);
Farhat fails to explicitly disclose but Lim does disclose access control that defines credentials for users that determine who is able to access a document, wherein the access control allows specifying view access and full edit/delete access (¶ [0146], [0723]);
ethical walls that define specific entities or persons that can access certain
documents as well as other specific entities or persons who are not allowed to access the documents (¶¶ [0509]-[0517] “ethical wall”, Fig 21);
legal holds that specify senders, clients or matters for which there is a legal hold
due to impending or pending litigation (¶¶ [0509]-[0517], Fig 21, the separation of information through an ethical wall or separation of duty rules or conflict of interest have the effect of creating legal holds for conflicts or Chinese walls, which are implemented for legal reasons including litigation or impending litigation, which encompasses any potential litigation even though it is not filed);
governance that specifies retention policies for the digital document and corresponding paper document, tracking of who has reviewed the document, and tracking the location of the physical document (¶ [0146], [0723], [0418] “Archiving an e-mail message. An application of such is regulatory compliance where all executive e-mail communication should be archived. (2) Sending notification, such as when a critical document is being accessed, then sending an e-mail to a document administrator. (3) Encrypting message before transmission. The application can be security or regulatory compliance. HIPPA requires certain communications to certain people be encrypted.”, [0352] “Archive instructs the system to archive information. For example, for particular e-mails, they may need to be archived for compliance with securities or other laws”, [0126] “auditing or compliance”); and
compliance that specifies how documents in the cloud-based repository are
handled and maintained to assure compliance with any applicable regulations, including
government regulations (¶ [0146], [0723], [0418] “Archiving an e-mail message. An application of such is regulatory compliance where all executive e-mail communication should be archived. (2) Sending notification, such as when a critical document is being accessed, then sending an e-mail to a document administrator. (3) Encrypting message before transmission. The application can be security or regulatory compliance. HIPPA requires certain communications to certain people be encrypted.”, [0352] “Archive instructs the system to archive information. For example, for particular e-mails, they may need to be archived for compliance with securities or other laws”, [0126] “auditing or compliance”).
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 Lim 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. Lim is in the art of information and document management and it would have been obvious to a person skilled in the art to combine the art in order to improve access control by users or application with flexible rules or policy language and be capable of being used to secure information to ensure confidentiality, implement ethical walls and securely managing documents on a network (Lim [0013]-[0014]).
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 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
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