DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1 – 21 were previously pending and subject to a final office action mailed 11/17/2025. Claim 22 was added in a reply filed 05/18/2026. Claims 1 – 22 are currently pending and subject to the non-final office action below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed after final rejection on 05/18/2026 has been entered.
Response to Arguments
Applicant’s arguments filed with respect to the previous rejection of the claims under 35 USC 101 have been considered but are not persuasive.
Applicant initially argues, on pp. 10 – 11, that “although generating a hash value may involve underlying mathematical operations, the claims themselves do not recite any mathematical relationships, calculations, formulas, or equations expressed using words or mathematical symbols. Instead, the claims recite the use of a cryptographic hash function as part of a computer-based image processing and identification method. Accordingly, the pending claims merely involve mathematical operations as part of a technological process and do not recite the "Mathematical Concepts" grouping of abstract ideas.”
Examiner respectfully disagrees, and notes that by Applicant’s own admission, “hashing is a mathematical concept” (pg. 14 of remarks filed 08/07/2025). Examiner further notes that the hashing functions, as described in paragraph 82 of the instant specification, are fundamentally math-based algorithms. Therefore, the steps of “generating an item hash value using a cryptographic hash function on the item picture,” “generating a mail hash value using the hash function on the mail picture,” and “generating a transient mail hash value using the hash function on the transient mail picture” cover performance of the limitations in mathematical relationships, mathematical formulas or equations, mathematical calculations, and fall within the “Mathematical concepts” grouping of abstract ideas
Applicant next argues, on pp. 11 – 14, that “When these elements are evaluated in the context of the claim as a whole, and under the broadest reasonable interpretation of this claim, it is evident that the above limitations provide a particular technological solution in the field of mail tracking systems, rather than merely reciting an abstract idea” because “the alleged abstract idea is used to improvement [SIC] to mail tracking technology.”
Examiner respectfully disagrees, and refers Applicant to Step 2A, Prong Two of the 35 USC 101 rejection below as well as a response to a similar argument on pp. 4 – 5 of the office action mailed 11/17/2025 for a full explanation of why the additional elements fail to integrate the abstract idea into a practical application. Examiner additionally notes that the additional elements have been analyzed both alone and in an ordered combination during the Step 2A, Prong Two analysis. Additionally, as per MPEP 2106.05(a), “if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology.”
The Subject Matter Eligibility Declaration under 37 CFR 1.132 filed 05/18/2026 is insufficient to overcome the rejection of the claims under 35 USC 101 because of the following reasons:
Applicant argues, on pg. 14, regarding the SMED, that the claims are directed to a technological improvement because “the hash values are derived from intrinsic visual characteristics of the mailed item or mail piece itself, the resulting digital identifiers cannot be detached or lost in the way that physical identifiers can.”
Examiner respectfully disagrees, because avoidance of a loss or detachment of an identifier is an improvement to the recited judicial exception itself (i.e., a business process), rather than an improvement in computer functionality or any other technology.
Applicant next argues, on pg. 14, regarding the SMED, that the claims are directed to a technological improvement because, “By using hash values generated from image data of the physical object itself, the claimed method creates a persistent digital identifier that maintains an immutable association between the physical object and the tracking database. This architecture thereby improves the reliability and integrity of the tracking process compared to conventional label-based methods.”
Examiner respectfully disagrees that generating an identifier amounts to an improvement in computer functionality or any other technology. Examiner respectfully submits that, as per MPEP § 2106.05(f)(1), the claimed functionality of generating a hash value using a hash function on a mail picture provides only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015). In contrast, claiming a particular solution to a problem or a particular way to achieve a desired outcome may integrate the judicial exception into a practical application or provide significantly more. See Electric Power, 830 F.3d at 1356, 119 USPQ2d at 1743.”
Examiner further notes that, as Applicant states in the above argument, the claimed invention is merely “using hash values generated from image data.” In other words, rather than being directed to a new or improved hash function or technique for generating a hash value, the claims merely “use” a generic hash function which performs a mathematic computation to output a value based on an image. Moreover, an improvement to “the reliability and integrity of the tracking process” amount to an improvement to the recited judicial exception itself. Therefore, the claims are not directed to an improvement in the way a computer functions or to hashing technology.
Examiner notes that in Secured Mail Solutions, LLC v. Universal Wilde, the court indicated that the functionality of “affixing a barcode to a mail object in order to more reliably identify the sender and speed up mail processing, without any limitations specifying the technical details of the barcode or how it is generated or processed” may not be sufficient to show an improvement in computer-functionality in “without any limitations specifying the technical details of the barcode or how it is generated or processed.” (Secured Mail Solutions, LLC v. Universal Wilde, Inc., 873 F.3d 905, 910-11, 124 USPQ2d 1502, 1505-06 (Fed. Cir. 2017)). Examiner submits that, as in Secured Mail Solutions, the present claims likewise aim to improve “the reliability and integrity of the tracking process” (as stated in Applicant’s argument) while also failing to recite any limitations specifying the technical details of the hash values or how they are generated or processed. Therefore, the claims are not directed to an improvement in computer-functionality. (See MPEP § 2106.05(a)(I)).
Applicant next argues, on pg. 14, regarding the SMED, that the claims allow “items to be tracked even when barcode information is unavailable.”
Examiner submits that tracking an item without a barcode is likewise an improvement to the recited judicial exception itself (i.e., a business process), rather than an improvement in computer functionality or any other technology. As the court noted in Enfish, “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. As noted infra, in Bilski and Alice and virtually all of the computer-related § 101 cases we have issued in light of those Supreme Court decisions, it was clear that the claims were of the latter type—requiring that the analysis proceed to the second step of the Alice inquiry, which asks if nevertheless there is some inventive concept in the application of the abstract idea.” See Alice, 134 S. Ct. at 2355, 2357–59. In this case, however, the plain focus of the claims is not to an improvement to computer functionality itself, but “on economic or other tasks for which a computer is used in its ordinary capacity.” The instant claims are directed to a method of organizing human activity and mathematical concepts, which invokes generic computer components as a mere tool for implementation, rather to an improvement thereof. For example, the claims are not directed to an improvement in the functionality of a computing device or other technology; thus, the claims are directed to a judicial exception without significantly more, and the 101 rejection is maintained.
Applicant next argues, on pp. 14 – 15, regarding the SMED, that “because the picture of the item is transformed into a cryptographic hash value, the original item information cannot be reconstructed from the hash value,” which “the contents of the mailed item remain unobservable to the mail service computing device,” thus preserving user privacy.
Examiner respectfully disagrees, as protecting user data is an improvement to the recited judicial exception itself (i.e., a business process), rather than an improvement in computer functionality or any other technology.
Applicant next argues, on pg. 15, regarding the SMED, that “the claimed method provides a technical improvement in data security and privacy by enabling tracking of a mailed item without exposing the underlying item information, while using a unified hashing framework without requiring additional complexity.”
Examiner respectfully disagrees, and notes that in RecogniCorp, LLC v. Nintendo Co. (855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017)), “encoding” information was deemed to be an abstract idea. As noted above, enhancing user data privacy is an improvement to the recited judicial exception itself (i.e., a business process), rather than an improvement in computer functionality or any other technology.
Examiner further notes that the instant specification does not mention any improvements to data security or privacy. Rather, paragraph 27 of the instant specification clarifies that the claims are directed to “a method to create evidence of original items and an evidentiary trail, protecting the customer, assisting law enforcement, and establishing bank liability over altered checks, thus bolstering safety and security of the mail” – all of which are “economic or other tasks for which a computer is used in its ordinary capacity,” as in Enfish. Examiner respectfully submits that, as in Enfish, the plain focus of the instant claims is not to an improvement to computer functionality itself, but “on economic or other tasks for which a computer is used in its ordinary capacity.” The instant claims are directed to a method of organizing human activity and mathematical concepts, which invokes generic computer components as a mere tool for implementation, rather to an improvement thereof. For example, the claims are not directed to an improvement in the functionality of a computing device or other technology; thus, the claims are directed to a judicial exception without significantly more, and the 101 rejection is maintained.
Applicant next argues, on pg. 16, regarding newly-added claim 22, that “This configuration provides a technical improvement by enforcing time-limited storage of correlation data between the mailed item and the user, thereby reducing the risk of unauthorized access and misuse of such data. In particular, by automatically discarding the item hash value and the mail hash value after the predetermined period, the system reduces the exposure of sensitive data and limits the duration during which the data can be exploited, thereby improving data security and privacy at the system level.”
Examiner respectfully disagrees, because the additional elements, as recited in claim 22, of “storing the set of data in a database coupled to the mail service computing device for a predetermined period of time, and discarding the item hash value and the mail hash value after the predetermined period of time” are extra-solution activity, and has been found by the courts to be well-understood, routine, and conventional activity (See MPEP § 2106.05(d)(II), noting: “Electronic recordkeeping” and “Storing and retrieving information in memory”), and thus do not amount to significantly more under Step 2B. Moreover, reducing the risk of unauthorized access and misuse of data is directed to “economic or other tasks” as in Enfish – rather than to an improvement in computer functionality or any other technology.
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 – 22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1 – 10 & 21 – 22 are directed to a method (i.e., a process). Claims 11 – 19 are directed to a product. Claim 20 is directed to a machine (i.e., system). Therefore, claims 1 – 20 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claims 1, 11, & 20 substantially recite: generating an item hash value using a cryptographic hash function on the item picture…; generating a mail hash value using the hash function on the mail picture; generating a transient mail hash value using the hash function on the transient mail picture; comparing the transient mail hash value related to the picture… to the mail hash value related to the picture… to determine whether the transient mail piece is the mail piece; and tracking the mailed item in the mail piece by monitoring one or more notifications regarding delivery status information of the mail piece from the mail service computing device, wherein the one or more notifications regarding delivery status information of the mail piece are generated based on (i) one or more comparisons of the item hash value to other item hash values for other mail pieces, (ii) the result of comparing the transient mail hash value to the mail hash value, and (iii) the user ID.
The limitations stated above are processes that, under the broadest reasonable interpretation, cover performance of the limitation in a business relation or commercial interaction as well as in a mathematical calculation. That is, the functions in the context of this claim encompass providing tracking updates for mailed items as well as performing a mathematical calculation (i.e., function) to generate a hash value. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in a commercial interaction, or while managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas e.g., “commercial or legal interactions (including marketing or sales activities or behaviors; business relations, and following rules or instructions).” Additionally, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in mathematical relationships, mathematical formulas or equations, mathematical calculations (e.g., generating an item hash value using a hash function on a picture), then it falls within the “Mathematical concepts” grouping of abstract ideas. Accordingly, the claims recite abstract ideas that fall within the “Certain Methods of Organizing Human Activity” and “Mathematical concepts” groupings of abstract ideas.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claims 1, 11, & 20, as a whole, amount to: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment. Claim 1 recites the additional computer-related element of: “processor,” “non-transitory memory,” “mobile device,” and “mail service computing device.” Claim 11 recites the additional computer-related elements of: “non-transitory computer readable medium having instructions stored thereon,” “processor,” “mobile device,” and “mail service computing device.” Claim 20 recites the additional computer-related elements of: “mobile device,” “non-transitory memory having instructions stored thereon,” “processor operatively coupled to the non-transitory memory, and configured to read the instructions,” and “mail service computing device.” In addition, claims 1, 11, & 20 recite the additional elements of: “capturing, using a first camera on a mobile device, an item picture of the mailed item,” “wherein the cryptographic hash function is trained on machine learning and images,” “capturing, using the first camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” “transmitting the item hash value, the mail hash value and a user identity (TD) of the user to a mail service computing device associated with a mail service configured for carrying and delivering the mail piece,” “capturing, using a second camera, separate and distinct from the first camera, a transient mail picture of a transient mail piece while the transient mail piece is not in the possession of a sender of the transient mail piece,” “captured by the second camera,” and “captured by the first camera.”
The additional elements of “processor,” “mobile device,” “processor operatively coupled to the non-transitory memory, and configured to read the instructions,” “non-transitory memory,” “non-transitory computer readable medium having instructions stored thereon,” “non-transitory memory having instructions stored thereon,” and “mail service computing device” are recited at a high-level of generality, such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
The additional element of “wherein the cryptographic hash function is trained on machine learning and images” is recited at a high-level of generality, such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)). Furthermore, the additional element of “wherein the cryptographic hash function is trained on machine learning and images” is recited at a high-level of generality, and when viewed as whole/ordered combination, merely generally links the use of the judicial exception to a particular technological environment or field of use (machine learning) (See MPEP 2106.05(h)).
The additional elements of “capturing, using a first camera on a mobile device, an item picture of the mailed item,” “capturing, using the first camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” “capturing, using a second camera, separate and distinct from the first camera, a transient mail picture of a transient mail piece while the transient mail piece is not in the possession of a sender of the transient mail piece,” “captured by the second camera,” and “captured by the first camera” are recited at a high-level of generality, and when viewed as whole/ordered combination, merely generally link the use of the judicial exception to a particular technological environment or field of use (scanning / electronic imaging) (See MPEP 2106.05(h)). Furthermore, the additional elements of “capturing, using a first camera on a mobile device, an item picture of the mailed item,” “capturing, using the first camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” “capturing, using a second camera, separate and distinct from the first camera, a transient mail picture of a transient mail piece while the transient mail piece is not in the possession of a sender of the transient mail piece,” “captured by the second camera,” and “captured by the first camera,” when viewed as whole/ordered combination, amount to insignificant extra-solution activity (e.g., pre-solution activity), such as mere data gathering (See MPEP 2106.05(g)).
The additional element of “transmitting the item hash value, the mail hash value and a user identity (TD) of the user to a mail service computing device associated with a mail service configured for carrying and delivering the mail piece,” when viewed as whole/ordered combination, amounts to insignificant extra-solution activity (See MPEP 2106.05(g)).
Accordingly, the additional elements as recited in claims 1, 11, & 20 of: “processor,” “mobile device,” “processor operatively coupled to the non-transitory memory, and configured to read the instructions,” and “mail service computing device,” “non-transitory memory,” “non-transitory computer readable medium having instructions stored thereon,” “non-transitory memory having instructions stored thereon”, “capturing, using a camera on a mobile device, an item picture of the mailed item,” and “capturing, using the camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” when viewed as a whole/ordered combination (See Figure. 1, showing the additional elements in combination), do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, claims 1, 11, & 20 are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), (ii) adding insignificant extra-solution activity to the judicial exception, as well as (iii) generally linking the recited judicial exception to a particular field or technological environment, and do not provide integration of the recited abstract ideas into a practical application. The same analysis applies here in Step 2B, i.e., (i) merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)); and (ii) adding insignificant extra-solution activity (e.g., pre-solution activity, such as mere electronic scanning) to the judicial exception (See MPEP2106.05(g)), as well as (iii) generally linking the recited judicial exception to a particular technological environment or field of use (See MPEP 2106.05(I)(A) & MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
The extra-solution functionality of “capturing, using a first camera on a mobile device, an item picture of the mailed item,” “capturing, using the first camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” “capturing, using a second camera, separate and distinct from the first camera, a transient mail picture of a transient mail piece while the transient mail piece is not in the possession of a sender of the transient mail piece,” “captured by the second camera,” and “captured by the first camera” has been found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting: “Electronically scanning or extracting data from a physical document”), and thus do not amount to significantly more under Step 2B.
The extrasolution activity of “transmitting the item hash value, the mail hash value and a user identity (TD) of the user to a mail service computing device associated with a mail service configured for carrying and delivering the mail piece” is similar to functionality found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting “Receiving or transmitting data over a network, e.g., using the Internet to gather data”), and thus does not amount to significantly more.
Therefore, the additional elements of “processor,” “mobile device,” “processor operatively coupled to the non-transitory memory, and configured to read the instructions,” and “mail service computing device,” “non-transitory memory,” “non-transitory computer readable medium having instructions stored thereon,” “non-transitory memory having instructions stored thereon”, “capturing, using a first camera on a mobile device, an item picture of the mailed item,” “wherein the cryptographic hash function is trained on machine learning and images,” “capturing, using the first camera on the mobile device, a mail picture of a front side of the mail piece containing the mailed item, wherein one or more marks are put by the user in at least one specified zone on the front side of the mail piece when the mail picture is taken,” “transmitting the item hash value, the mail hash value and a user identity (TD) of the user to a mail service computing device associated with a mail service configured for carrying and delivering the mail piece,” “capturing, using a second camera, separate and distinct from the first camera, a transient mail picture of a transient mail piece while the transient mail piece is not in the possession of a sender of the transient mail piece,” “captured by the second camera,” and “captured by the first camera,” as recited in claims 1, 11, & 20, fail to integrate the recited abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. There is no indication that the combination of elements, taken both individually and as an ordered combination, improves the functioning of a computer or improves any other technology. Thus, the claims are not patent eligible.
Furthermore, dependent claims 2 – 10, 12 – 19, & 21 – 22 are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The additional elements of “storing the item hash value and the mail hash value on the mobile device” in claims 2 & 12, “store the mail hash value as one of a plurality of hash values when the uniqueness is established” in claims 3 & 13, and “storing the additional mail hash value on the mobile device” in claims 5 & 15 is similar to functionality found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting “Electronic recordkeeping” & “Storing and retrieving information in memory”), and thus does not amount to significantly more. The additional claim 21 elements of “prior to the step of generating a mail hash value, performing at least one of orientation normalization, brightness normalization and color normalization on the mail picture” and “prior to the step of generating a transient mail hash value, performing at least one of orientation normalization, brightness normalization and color normalization on the transient mail picture” are recited at a high-level of generality, and when viewed as whole/ordered combination, merely generally link the use of the judicial exception to a particular technological environment or field of use (e.g., image processing) (See MPEP 2106.05(h)). The additional claim 22 elements of “storing the set of data in a database coupled to the mail service computing device for a predetermined period of time, and discarding the item hash value and the mail hash value after the predetermined period of time” are extra-solution activity, and has been found by the courts to be well-understood, routine, and conventional activities (See MPEP § 2106.05(d)(II), noting: “Electronic recordkeeping” and “Storing and retrieving information in memory”), and thus do not amount to significantly more under Step 2B.
The limitations of the claims, when considered both individually and as an ordered combination, do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea with generic computer components that conduct generic computer functions within a certain field of use, and thus are ineligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN J KIRK whose telephone number is (571)272-6447. The examiner can normally be reached Monday -Friday 9:00-5:00.
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/BRYAN J KIRK/Examiner, Art Unit 3628
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