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 Status
Claims 1-14 are currently pending and are presented for examination on the merits.
It is noted that Applicant filed multiple claim sets on 9/15/2024 that differ, a preliminary amendment on 8/24/2025, and a second preliminary amendment on 11/5/2025 that stems from an original set (i.e., not the 8/24 preliminary amendment). Examiner hereby exercises his discretion to enter and examine the 11/5/2025 claim set.
Priority
Applicant's claim for the benefit of and priority to US Serial No. 17/382274, and U.S. provisional patent application 62/706005 filed July 24, 2020 under 35 U.S.C. §§ 119(e), 120 is acknowledged.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 8/12/2025 was filed before the filing of a first office action on the merits. As such, the submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Objections
Specification
The use of trademarks, such as “UPS, FedEx, DHL," and “Apple Pay, Google Pay, Square, Mastercard, Visa, Amex, Discover” has been noted in this application (e.g., at ¶¶ [0011] and [0014]). They should be capitalized (ALL CAPS) wherever they appear (or include a proper trademark symbol) and may be accompanied by the generic terminology. Although the use of trademarks is permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as trademarks. MPEP 608.01(v). Please check the entire specification for all instances.
Claim Objections
The independent claims are objected to because of the line numbers displayed next to them, which frustrates cut and pasting. Please remove line numbering in the claim set going forward.
Claim 1 the terms “message” “messages” and message(s)” are used interchangeably. Please be consistant so as to reduce confusion that each reference to messaging is referring to the same thing.
Provisional Type Double Patenting
Claim 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Serial No. 17/576,571 application (US Patent No. 12,093,887). Though slightly different in scope, the sets of claims are not patentably distinct from each other because the instant claims recite the same limitations contained in the claims of the ‘571 application, with like claims being mapped (e.g., the instant method of Claim 8 to the method of claim 1 in the ‘571 application; the computer of Claim 1 to claim 13 of the ‘571 application (and the like). As such, the instant claims are obvious in light of the parent claims.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In reLongi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Omum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(1)(1) - 706.02(1)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/ AIA / 26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
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 1-14 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under the 2019 PEG. The claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under the 2019 PEG, step 2a-prong 1, Claims 1-12 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps are directed towards the receipt and shipping of an item, using a code to facilitate same (e.g., track the item in transit), and generating a label to be bifurcated and used to facilitate same. These are long standing commercial practice previously performed at least by shipping, mailing, and delivery companies, such as FedEx, UPS, USPS, etc. Bifurcating a label bearing an accessor code to be applied in part and torn in part away from a package is an abstract idea performed at post offices. As such, the inventions include an abstract idea(s) under the 2019 PEG, and Alice Corporation. Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure, using an accessor code and scanner/phone to convey information, doing so at a security checkpoint, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h), and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (security checkpoints) (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims (e.g., recitations regarding plurality of gateways, kiosk, QR codes, RFID tags, etc.) either further delineate the abstract idea, recite insignificant extra-solution activity, or instruct the artisan to apply it (the abstract idea) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claims 1-14 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US 2009/0187271 to Heinlein et al.
With respect to Claims 1, and 8, Heinlein teaches a computer (e.g., FIG. 1; [0042], see computer throughout), comprising: a processor; a nontransitory memory having stored therein one or more programs programmed to cause the processor to: instruct an output device to generate media each to bear an accessor code (FIG. 2c; [0021-24]), the generated media comprising two components frangibly joined ([0021-24]), one component designed for permanent affixation to an empty envelope (FIG. 4), the other component designed to be torn from the envelope and to be carried away from a security checkpoint by a customer ([0021-24]; FIG. 1 (“Take Away”)), the generating instructions programmed to direct the output device to generate the accessor code in computer-readable form on both the permanently affixed component and the component to be torn away ([0021-24];FIGS. 3c, 3d); receive one or more internet messages ([0027]), the message content indicating that a customer seeks to initiate a parcel shipment ([0021-24]), addressing of the message and/or content of the message being based at least in part on the accessor code of the carried-away tear-off component ([0021-24];[0027]), the envelope with its affixed accessor code having been prepositioned at the security checkpoint where forbidden items must be surrendered and having been prepared with the accessor code accessible via smartphone reader (FIGS. 2-5; [0021]), the delivery initiation message having been triggered by a smartphone having accessed the accessor code of the carried-away tear-off component after the customer has left the checkpoint no longer in possession of the envelope ([0021-24]); in response to receipt of the initiation message(s), and after the customer has left the checkpoint and is no longer in possession of the envelope, to send messages to request payment information and personal contact information from the smartphone ([0021-24]); in response to receipt of the initiation message(s), and after the customer has left the checkpoint and is no longer in possession of the envelope, to exchange messages with the smartphone to obtain, confirm, or modify delivery address information (FIG. 1; [0042]), and to store the delivery address information in a database record indexed by the received accessor code for the envelope; in response to receipt of the payment and delivery address information ([0042]), to send internet messages with content instructing retrieval of the envelope from the security checkpoint where the envelope was tendered by the customer; and in response to receipt of the payment and delivery address information (FIG. 1; [0042]), to send internet messages to arrange shipment and delivery, content of the messages providing the payment and delivery address information to the delivery shipper, to arrange shipment of the envelope by a delivery shipper and delivery to an address specified by the delivery address information (FIG. 1; [0042]).
With respect to Claims 2, and 13, Heinlein teaches sending messages to the smartphone offering a plurality of payment gateways for selection by a user of the smartphone ([0042]).
With respect to Claims 3, and 14, Heinlein teaches sending and receiving messages to and from a computer embedded in a kiosk located at the security checkpoint, the messages from the kiosk providing one or more of the accessor code, personal contact information, payment information, and delivery address information ([0022], a printer teaches a computer providing the accessor code;[0027];[0033];[0042]).
With respect to Claims 4, and 10, Heinlein teaches sending messages to the kiosk's computer instructing the kiosk's computer to print a label at a printer located at the kiosk. [0022]
With respect to Claims 5, and 11, Heinlein teaches wherein: the generated media bear the stored accessor codes as printed QR codes. [0027]
With respect to Claims 6, and 12, Heinlein teaches wherein: the generated media bear the stored accessor codes as RFID tags. [0027];[0030]
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 7 and 9 are rejected under § 103 as being unpatentable over Heinlein, in view of US 6917924 to Ramsden et al.
With respect to Claims 7, and 9, Heinlein teaches after receiving the requested payment information (FIG. 1; [0042]), but fails to teach prepopulate[ing] delivery address information of the database record of the received accessor code with address information associated with payment information received from the smartphone. Ramsden teaches an automated package shipping machine that repopulates information such as “the address information” from prior transaction data (col 22, ln 54-59; col 29, ln 23-29). Ramsden discusses the need improve convenience and cost effictiveness. (col 1, 23-col 2, ln 9). As such, it would have been obvious to one of ordinary skill in the art to modify Heinlein to include prepopulating the address associated with recorded payment information so as to increase convenience and cost.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Gart can be reached on 5712723955. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM J JACOB/Examiner, Art Unit 3696