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 .
DETAILED ACTION
Status of Claims
This communication is a First Office Action on the merits in reply to application number 18/945,008 filed on 11/12/2024.
Claims 1-2 are currently pending and have been examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119 and/or 35 U.S.C. 120 is acknowledged.
CONTINUATION
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
c) a commingling facility that comingles said first and second sets of mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications (App. Nos. 61861749, 14449735, 16773528, 17234245) fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, the prior filed applications fail to provide support for claim 1 of the instant application because the prior-filed applications fail to provide adequate support for the claimed mail processing system that includes “c) a commingling facility.”
This application is a continuation of U.S. application 14/449,735 (now US Pat. No. 10,543,513) filed on 08/01/2014 (“Parent Application”), U.S. application 16/773,528 (now US Pat. No. 10,981,199) filed on 01/27/2020 (“Parent Application”), U.S. application 17/234,245 filed on 04/19/2021 (abandoned), U.S. application 18/178,378 filed on 03/03/2023 (abandoned), and 18/514,469 filed on 11/20/2023 (abandoned). See MPEP §201.08. In accordance with MPEP §609.02 A. 2 and MPEP §2001.06(b) (last paragraph), the Examiner has reviewed and considered the prior art cited in the Parent Application. Also in accordance with MPEP §2001.06(b) (last paragraph), all documents cited or considered ‘of record’ in the Parent Application are now considered cited or ‘of record’ in this application. Additionally, Applicant(s) are reminded that a listing of the information cited or ‘of record’ in the Parent Application need not be resubmitted in this application unless Applicants desire the information to be printed on a patent issuing from this application. See MPEP §609.02 A. 2. Finally, Applicants are reminded that the prosecution history of the Parent Application is relevant in this application. See e.g., Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1350, 69 USPQ2d 1815, 1823 (Fed. Cir. 2004) (holding that statements made in prosecution of one patent are relevant to the scope of all sibling patents).
Double Patenting
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 obviousness-type 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 re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-2 are rejected on the ground of nonstatutory double patenting over claim 1 of U.S. Patent No. 10,543,513 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
Claims of instant App.
(as filed on 11/12/2024)
Claims of US Pat. No. 10,543,513
(issued on 01/28/2020)
1
1
2
1
The chart above maps claims 1-2 of the instant application to corresponding claim of U.S. Patent 10,543,513 that are patentably indistinct, though not identical. For example, the chart below maps the limitations of claim 1 of the instant application (similarly applicable to claim 2) to corresponding limitations of the ‘513 patent deemed as being identical, functionally equivalent, or patentably indistinct:
Limitations of claim 1 of
the instant application
Corresponding limitations of
claim 1 of US Pat. No. 10,543,513
at least one pre-sort facility, wherein said pre-sort facility creates a first set of diverted mail items based on a set of commingling rules;
at least one pre-sort facility to physically divert the at least one diverted mail item [i.e., first set of diverted mail items] to the print and mail manufacture facility;
the at least one pre-sort facility generates mail piece arrival notification messages that identify, in real-time, physical mail items present at the at least one pre-sort facility, diverting first groups of address-related mail pieces to be delivered to a respective print and mail manufacture facility [i.e., based on a set of commingling rules];
b) a print and mail manufacture facility that generates a second set of manufactured mail items based on the set of commingling rules;
and a second set of mail processing machines located at the print and mail manufacture facility;
the second set of mail processing machines is configured to: i) receive the mail pieced arrival notification messages;
diverted instruction instructs the at least one pre-sort facility to physically divert the at least one diverted mail item to the print and mail manufacture facility; iv) dynamically generate the at least one manufactured physical mail item, v) receive the at least one diverted physical mail item from the at least one pre-sort facility [i.e., second set of manufactured mail items based on commingling rules];
c) a commingling facility that comingles said first and second sets of mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule.
ii) at least one second collator for collating mail pieces in respective groups of address-related mail pieces; iii) and at least one second inserter for inserting each respective group of address-related mail pieces into each single respective mailing envelope directed to a respective single mailing address…the print and mail manufacture facility [i.e., a commingling facility]…dynamically generate the at least one manufactured physical mail item, v) receive the at least one diverted physical mail item from the at least one pre-sort facility; vi) dynamically match the at least one diverted physical mail item to the at least one manufactured mail item based on the at least one commingling plan; and vii) dynamically commingle the at least one diverted mail item physically cached in an automated storage and retrieval system to the at least one manufactured physical mail item to produce at least one commingled physical mail item [i.e. rules implemented by the commingling facility for commingling the sets of mail items],
One of ordinary skill in the art would have recognized the slight differences between the claim language/limitations of the corresponding claims as being directed towards intention, non-functional and non-structural field-of-use language, slight variations in terminology, or obvious variants of claim elements, and therefore these claims are not patentably distinct from one another despite these slight differences. For example, the ‘513 Patent does not explicitly recite “the at least one commingling rule” or “set of commingling rules” as recited in claims 1/2 of the instant application, but instead recites actual steps/procedures that function as sets of rules for implementing the commingling, and therefore the slight difference is attributable to variation in terminology, which is insufficient to render the claims as patentably distinct from one another.
Claims 1-2 are rejected on the ground of nonstatutory double patenting over claim 1 U.S. Patent No. 10,981,199 since the claims, if allowed, would improperly extend the "right to exclude" already granted in the patent.
Claims of instant App.
(as filed on 11/12/2024)
Claims of US Pat. No. 10,981,199
(issued on 04/20/2021)
1
1
2
1
The chart above maps claims 1-2 of the instant application to corresponding claims of U.S. Patent 10,981,199 that are patentably indistinct, though not identical. For example, the chart below maps the limitations of claim 1 of the instant application (similarly applicable to claim 2) to corresponding limitations of the ‘199 patent deemed as being identical, functionally equivalent, or patentably indistinct:
Limitations of claim 1 of
the instant application
Corresponding limitations of
claim 1 of US Pat. No. 10,981,199
at least one pre-sort facility, wherein said pre-sort facility creates a first set of diverted mail items based on a set of comingling rules;
at least one pre-sort facility at a first physical location, wherein the at least one pre-sort facility generates mail piece arrival notification messages, wherein the at least one diverted instruction instructs the at least one pre-sort facility to physically divert the at least one diverted mail item to the print and mail manufacture facility [i.e., based on a set of commingling rules];;
b) a print and mail manufacture facility that generates a second set of manufactured mail items based on the set of comingling rules;
a second set of mail processing machines located at a print and mail manufacture facility at a second physical location that differs from said first physical location, wherein the second set of mail processing machines comprises: i) at least one printer for printing at least one physically manufactured mail item and envelopes; wherein the at least one diverted instruction instructs the at least one pre-sort facility to physically divert the at least one diverted mail item to the print and mail manufacture facility; wherein the second set of mail processing machines is configured to: i) receive the mail piece arrival notification messages [i.e., second set of manufactured mail items based on commingling rules];
c) a commingling facility that comingles said first and second sets of mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule.
iii) and at least one inserter for inserting each respective group of address-related mail pieces into each single respective mailing envelope directed to a respective single mailing address to form each respective commingled mail item; based on the at least one commingling plan, at least one diverted instruction to be electronically transmitted to the at least one pre-sort facility, wherein the at least one diverted instruction instructs the at least one pre-sort facility to physically divert the at least one diverted mail item to the print and mail manufacture facility; iv) receive the at least one diverted physical mail item from the at least one pre-sort facility; v) dynamically match the at least one diverted physical mail item to the at least one manufactured mail item based on the at least one commingling plan; and vi) dynamically commingle the at least one diverted mail item to the at least one manufactured physical mail item to produce at least one commingled physical mail item [i.e. rules implemented by the commingling facility for commingling the sets of mail items],
One of ordinary skill in the art would have recognized the slight differences between the claim language/limitations of the corresponding claims as being directed towards intention, non-functional and non-structural field-of-use language, slight variations in terminology, or obvious variants of claim elements, and therefore these claims are not patentably distinct from one another despite these slight differences. For example, the ‘199 Patent does not explicitly recite explicitly recite “the at least one commingling rule” or “set of commingling rules” as recited in claims 1/2 of the instant application, but instead recites actual steps/procedures that function as sets of rules for implementing the commingling, and therefore the slight difference is attributable to variation in terminology, which is insufficient to render the claims as patentably distinct from one another.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 2 recites the limitation of “said first set of diverted mail items,” which lacks antecedent basis because this limitation has not been introduced into the claims. It is unclear whether “said first set of diverted mail items” is intended to refer to first set of mail items that was previously introduced into the claim, or whether said first set of diverted mail items is intended to refer to a new/different set of mail items, such that the claim requires both a first set of mail items and a first set of diverted mail items. Appropriate correction is required.
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 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1-2 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the subject matter eligibility guidance set forth in MPEP 2106.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106.03), it is first noted that the method (claim 2) is directed to a potentially eligible category of subject matter (i.e., a process), and therefore meets Step 1 of the eligibility inquiry.
However, claim 1 is directed to a system that does not fall within any of the statutory categories of subject matter. The system, as recited in exemplary claim 1, is comprised of at least one pre-sort facility, a print and mail manufacture facility, and a commingling facility. None of these elements individually or in combination render the system as a process, machine, article of manufacture, or composition of matter. Notably, the term facility, under a broadest reasonable interpretation, is a generic term with a scope that covers, for example, a capability, a capacity, an institution, a means, an accommodation, or the like, though not embodied via any discernible physical structure. Accordingly, claim 1 is not directed to one of the statutory categories of eligibility set forth in 35 USC §101 and therefore these claims fail to satisfy Step 1 of the subject matter eligibility inquiry. However, because claim 1 could be amended to include physical/hardware elements to satisfy Step 1, claim 1 is further evaluated under Step 2 of the eligibility inquiry along with claim 2 below.
With respect to Step 2A Prong One of the eligibility inquiry (as explained in MPEP 2106.04), it is next noted that the claims recite an abstract idea that falls into the “Certain Methods of Organizing Human Activity” abstract idea grouping by setting forth fundamental economic practices or commercial interactions (mail/postal handling) or rules/instructions for people to carry out. With respect to independent claim 1, the limitations reciting the abstract idea are: creates a first set of diverted mail items based on a set of commingling rules; ... generates a second set of manufactured mail items based on the set of commingling rules …; …commingles said first and second sets of mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule. Independent claim 2 recites similar limitations as claim 1 and has been determined to recite the same abstract idea. Furthermore, the method steps of claim 2 are disembodied because there is no hardware, structure, machine or the like recited as performing any of the sorting, generating, receiving, or commingling, such that claim 2 is silent regarding how or by what means (e.g., human, machine, computer) these steps are to be implemented. Accordingly, the steps of claim 2 are merely recited as concepts, which can be performed as “Mental Processes” such as via human observation, evaluation, judgment, or opinion.
Accordingly, because one or more abstract ideas are included in the claims, additional analysis (Step 2B) must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2A Prong Two of the eligibility inquiry (as explained in MPEP 2106.04(d)), the judicial exception is not integrated into a practical application. The additional elements recited in independent claims 1 and 2 are directed to at least one pre-sort facility, a print and mail manufacture facility (claims 1 and 2), and a commingling facility (claim 1). However, the facilities are recited at a high level of generality, do not impose meaningful limitation on the scope of the claims, but may simply encompass a place, area, or building space for carrying out the corresponding limitations, and at most amount to generally linking the judicial exception to a particular technological environment or field of use. MPEP 2106.05(h). Furthermore, these elements fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry (as explained in MPEP 2106.05), it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements recited in independent claims 1 and 2 are directed to at least one pre-sort facility, a print and mail manufacture facility (claims 1 and 2), and a commingling facility (only in claim 1). However, these facilities are recited at a high level of generality, do not impose meaningful limitation on the scope of the claims, but may simply encompass a place, area, or building space for carrying out the corresponding limitations, and moreover, Official Notice is taken that using a facility to perform pre-sorting or generation or commingling of mail items amounts to well-understood, routine, and conventional activity in the art. Notably, it is logically infeasible to perform any manner of mail processing operations without a facility (e.g., a place, building, area).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or any other technology. Their collective functions merely provide conventional computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as unpatentable over Wilen (US 2012/0066060) in view of Brehm et al. (US 2002/0053533, hereinafter “Brehm).
Claim 1: Wilen teaches a mail item processing system (paragraphs 22-23: multi-client, fine sorted, national commingled direct mail stream; systems and methods of the invention save production costs and reduce waste), comprising:
a) at least one pre-sort facility, wherein said pre-sort facility creates a first set of … mail items based on at least one commingling rule (paragraphs 5-7, 10-12, 79, and Figs. 2A-C: e.g., mail sorting systems are now also used by corporations and other mailers to pre-sort mail prior to delivery in order to earn discounts on postage; commingling is performed by specialty companies. Due to the nature of direct mail, these companies generally operate on a regional basis. The reasons for regional operation are that postal pre-sorting capital equipment expenses are quite high, space needed to run these types of machines and operations are significant, and several small (between 500 & 100,000 mail pieces per day) customers are required to produce a steady enough stream of mail to take advantage of both pre-sort discounts and the machine speeds. Available equipment operates at speeds of 50,000-60,000 pre-sort mail pieces per hour; The data contained in each mailing list can include, for example, names, pre-fix and suffix standardization, and addresses including zip codes for the finest level of sorting and pre-sorting [i.e., at least one commingling rule]. The mailing list data pertaining to zip codes can include interpretation of the Intelligent Mail Bar (IMB) bar coding data for sorting the records, regardless of customer (i.e., list owner), into a single sequence [i.e., set of commingling rules]. The process of interpreting the IMB bar coding data can also include performing necessary concentration analysis in order to create the most efficient pre-sort sequence down to the carrier route sequence level when possible [i.e., at least one commingling rules]);
b) a print and mail manufacture facility that generates a second set of manufactured mail items (paragraphs 21, 30, 56, 83-85, and Figs. 2A-C: e.g., control printing device of the system can be any printing device suitable for printing on a plurality of sheets of material. The control printing device can print onto a sheet of material (i) personalized information comprising a plurality of personalized data entries each of which is specific to an individual or household, (ii) customized advertising information comprising a plurality of advertisements each of which is targeted toward a specific individual or household or a toward a predetermined group of individuals or households, and (iii) non-personalized information comprising one or more non-targeted items [i.e., second set of manufactured mail items]. Non-targeted items can include text, graphics, or other content that is not personalized so as to be specific to a single individual, group of individuals, address, or group of addresses, but which is included in all of the mail pieces in a production batch [i.e., comingling rules to the manufacture of mail items]); and
c) a commingling facility that commingles said first and second sets of mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule (paragraphs 29, 55, 63, 67 and Figs. 2A-C: printing, packaging, and delivering commingled mail to multiple clients through a postal system. In an exemplary embodiment, similar to the one shown in FIGS. 1 and 2A-2C, a system of the invention can include a control printing device, an inserting machine, a detection device, an envelope printing device, and software customized to control the aforementioned machines so that they operate in conjunction with one another to produce commingled mail intended for delivery to multiple clients. The system also features software installed on one or more computers for controlling the control printing device, the inserting machine, the detection device, and the envelope printing device to create a commingled mailing; system can also include an envelope press to construct envelopes around the commingled direct mail pieces being mailed; printed onto the envelope accordingly to…recipient name, a recipient address [i.e., based on at least one commingle rule]; See also, paragraph 5: Commingling blends multiple mailings and/or multiple versions within the same ZIP code, ultimately increasing postal qualifications, saturation, and improving discount tier qualifications, which reduces postage costs…can achieve even greater cost savings while also benefiting from faster delivery to target audiences [i.e., based on at least one comingling rule]).
Wilen does not explicitly teach that the first set of mail items are diverted mail items (Examiner’s Note: Wilen does strongly suggest that the mail from the pre-sort facility represents diverted mail items since the pre-sorted mail items are, in essence, diverted to the post office instead of being delivered to the intended recipient, as discussed in at least paragraphs 7, 11, 12, 21, and Figs. 2A-C).
Brehm more specifically teaches creating diverted mail items from a pre-sorting facility pursuant to commingling of mail pieces (at least Abstract and paragraphs 49, 50, 62, 68, 78, 87, 126, 155: e.g., present invention to reduce the burden on the postal service when mail volume increases using a method of identifying, diverting, and pooling together medium-sized batches for processing by a separate mail pre-sorting facility; may be diverted and pooled with other such batches until the pool contains a sufficient quantity of mail pieces to be accepted for pre-sorting; identifies and diverts such batches for processing at a separate facility before the batch is tendered to the postal service).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Wilen with Brehm because the references are analogous and compatible since they are both directed to features for commingling mail items, and because Brehm’s feature for diverting mail items is already suggested by Wilen (as noted above), and because pre-sorting and then diverting mail from a pre-sorting facility prior to commingling would serve the motivation in the art process mail at reduced postage rates by employing pre-sorting techniques in the commingling scheme (Brehm at paragraphs 3, 15, 45, 65, and 77); and further obvious because the claimed invention is merely a combination of old elements, and in the 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.
Claim 2: Wilen teaches a method (paragraphs 2, 23, and 40: multi-client, fine sorted, national commingled direct mail stream; methods of the invention save production costs and reduce waste), comprising:
a) sorting a first set of mail items at a pre-sort facility that creates a first set of mail items based on a set of commingling rules (paragraphs 5-7, 10-12, 79, and Figs. 2A-C: e.g., mail sorting systems are now also used by corporations and other mailers to pre-sort mail [i.e., first set of mail items] prior to delivery [i.e., via their pre-sort facility]; commingling is performed by specialty companies. Due to the nature of direct mail, these companies generally operate on a regional basis; Available equipment [of a pre-sort facility] operates at speeds of 50,000-60,000 pre-sort mail pieces per hour; The data contained in each mailing list can include, for example, names, pre-fix and suffix standardization, and addresses including zip codes for the finest level of sorting and pre-sorting [i.e., set of commingling rules]. The mailing list data pertaining to zip codes can include interpretation of the Intelligent Mail Bar (IMB) bar coding data for sorting the records, regardless of customer (i.e., list owner), into a single sequence [i.e., set of commingling rules]. The process of interpreting the IMB bar coding data can also include performing necessary concentration analysis in order to create the most efficient pre-sort sequence down to the carrier route sequence level when possible [i.e., set of commingling rules]);
b) generating a second set of manufactured mail items at a print and mail manufacture facility (paragraphs 21, 30, 56, 83-85, and Figs. 2A-C: e.g., control printing device of the system can be any printing device suitable for printing on a plurality of sheets of material. The control printing device can print onto a sheet of material (i) personalized information comprising a plurality of personalized data entries each of which is specific to an individual or household, (ii) customized advertising information comprising a plurality of advertisements each of which is targeted toward a specific individual or household or a toward a predetermined group of individuals or households, and (iii) non-personalized information comprising one or more non-targeted items [i.e., second set of manufactured mail items]. Non-targeted items can include text, graphics, or other content that is not personalized so as to be specific to a single individual, group of individuals, address, or group of addresses, but which is included in all of the mail pieces in a production batch); and
c) commingling said first set of diverted … items with said second set of manufactured mail items so as to assemble a plurality of mail items going to one address within a single envelope, based on the at least one commingling rule (paragraphs 29, 55, 63, 67 and Figs. 2A-C: printing, packaging, and delivering commingled mail to multiple clients through a postal system. In an exemplary embodiment, similar to the one shown in FIGS. 1 and 2A-2C, a system of the invention can include a control printing device, an inserting machine, a detection device, an envelope printing device, and software customized to control the aforementioned machines so that they operate in conjunction with one another to produce commingled mail intended for delivery to multiple clients. The system also features software installed on one or more computers for controlling the control printing device, the inserting machine, the detection device, and the envelope printing device to create a commingled mailing; system can also include an envelope press to construct envelopes around the commingled direct mail pieces being mailed; printed onto the envelope accordingly to…recipient name, a recipient address [i.e., based on the set of commingle rules]; See also, paragraph 5: Commingling blends multiple mailings and/or multiple versions within the same ZIP code, ultimately increasing postal qualifications, saturation, and improving discount tier qualifications, which reduces postage costs…can achieve even greater cost savings while also benefiting from faster delivery to target audiences [i.e., based on the set of comingling rules]).
Wilen does not explicitly teach that the first set of mail items are diverted mail items (Examiner’s Note: Wilen does strongly suggest that the mail from the pre-sort facility represents diverted mail items since the pre-sorted mail items are, in essence, diverted to the post office instead of being delivered to the intended recipient, as discussed in at least paragraphs 7, 11, 12, 21, and Figs. 2A-C).
Brehm more specifically teaches creating diverted mail items from a pre-sorting facility pursuant to commingling of mail pieces (at least Abstract and paragraphs 49, 50, 62, 68, 78, 87, 126, 155: e.g., present invention to reduce the burden on the postal service when mail volume increases using a method of identifying, diverting, and pooling together medium-sized batches for processing by a separate mail pre-sorting facility; may be diverted and pooled with other such batches until the pool contains a sufficient quantity of mail pieces to be accepted for pre-sorting; identifies and diverts such batches for processing at a separate facility before the batch is tendered to the postal service).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Wilen with Brehm because the references are analogous and compatible since they are both directed to features for commingling mail items, and because Brehm’s feature for diverting mail items is already suggested by Wilen (as noted above), and because pre-sorting and then diverting mail from a pre-sorting facility prior to commingling would serve the motivation in the art process mail at reduced postage rates by employing pre-sorting techniques in the commingling scheme (Brehm at paragraphs 3, 15, 45, 65, and 77); and further obvious because the claimed invention is merely a combination of old elements, and in the 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Brehm et al. (US Patent No. 7,522,971): discloses features for collecting and pooling unqualified batches of mail for pre-sorting, identifying and diverting batches for processing at a separate facility before being tendered to the postal service (See, e.g., Abstract).
Latta (US 2003/0200113): discloses features for mail sorting/distribution, including diverting items among nodes in the processing network (paragraph 70).
Bailey et al. (US 2011/0046775): discloses facility wide mail sorting, including features for diverting, merging, sorting, or sequencing mail items in an efficient and cost effective manner (See, e.g., paragraph 336).
Carlin et al. (US 2002/0184324): discloses a method/system for electronic commingling of hybrid mail, including performing presort on commingled jobs (See, e.g., paragraphs 12 and 60).
Lopez et al. (US 2005/0165704): discloses features for merging of bulk mailings, including diverting mail to a secondary location (at least paragraphs 23 and 47).
Humes et al. (US Patent No. 5,377,120): discloses features for commingling and addressing mail pieces.
A. Syberfeldt, H. Grimm, A. Ng, M. Andersson and I. Karlsson, "Simulation-based optimization of a complex mail transportation network," 2008 Winter Simulation Conference, Miami, FL, USA, 2008, pp. 2625-2631: discloses mail transportation optimization and simulation/modeling techniques, taking into account factors such as mail arrival profiles, mail processing and consolidation hubs, and transport routes and distances.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Timothy A. Padot whose telephone number is 571.270.1252. The Examiner can normally be reached on Monday-Friday, 8:30 - 5:30. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Brian Epstein can be reached at 571.270.5389. The fax phone number for the organization where this application or proceeding is assigned is 571- 273-8300.
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/TIMOTHY PADOT/
Primary Examiner, Art Unit 3625
12/12/2025