Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 17 is objected to because of the following informalities:
“The method of Claim 16, wherein reading the address information from the item to be delivered comprises using an optical reader that images a surface of the item.”
Appropriate correction is required.
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 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); 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 eTerminal 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,379,782. Although the claims at issue are not identical, they are not patentably distinct from each other.
For example, patented claim 1 recites: A method of processing items to be delivered, the method comprising:
storing, by a hardware processor in a database on a non-transitory computer readable medium, a first plurality of delivery addresses and customer preferences associated with each of the delivery addresses;
generating, by the hardware processor, first hash values for only each of the first plurality of delivery addresses stored in the database;
storing, by the hardware processor, the first hash values;
receiving, by processing equipment of a delivery service, a second plurality of delivery addresses for customers and one or more sender criteria;
generating, by the processing equipment of the delivery service, second hash values for each of the second plurality of delivery addresses;
searching, by the processing equipment of the delivery service, the database for first hash values corresponding to each of the second hash values;
storing, by the processing equipment of the delivery service, the second hash values;
accessing, in the database using the hardware processor, the customer preferences for each of the first hash values for which a corresponding second hash value is stored;
comparing, using the hardware processor, the one or more sender criteria to the customer preferences associated with the one or more of the plurality of delivery addresses for which a corresponding second hash value is identified;
generating, by the processing equipment of the delivery service, a third plurality of delivery addresses of the plurality of delivery addresses for which the customer preferences correspond to one or more of the received sender criteria;
providing, by the processing equipment of the delivery service via an electronic interface, a plurality of first or second hash values of delivery addresses on the generated third plurality of delivery addresses;
receiving, in processing equipment of a delivery service, an item having at least one of the plurality of first or second hash values thereon;
reading, in the processing equipment, the first or second hash value from the item;
determining, in the processing equipment, the delivery address for the item based on the read first or second hash value;
identifying, in the processing equipment, that the determined delivery address is based on the read first or second hash value;
prior to attempting delivery of the item, generating, in the processing equipment, an instruction to not return undeliverable mail in response to an undeliverable indication;
coding, in the processing equipment, the instruction in a barcode in response to the identifying; and
redirecting the item by the processing equipment based on the determined delivery address.
Patented claim 1 differs since it further recites additional claim limitations including: receiving, by processing equipment of a delivery service, a second plurality of delivery addresses for customers and one or more sender criteria; generating, by the processing equipment of the delivery service, second hash values for each of the second plurality of delivery addresses; searching, by the processing equipment of the delivery service, the database for first hash values corresponding to each of the second hash values; storing, by the processing equipment of the delivery service, the second hash values; accessing, in the database using the hardware processor, the customer preferences for each of the first hash values for which a corresponding second hash value is stored; comparing, using the hardware processor, the one or more sender criteria to the customer preferences associated with the one or more of the plurality of delivery addresses for which a corresponding second hash value is identified; generating, by the processing equipment of the delivery service, a third plurality of delivery addresses of the plurality of delivery addresses for which the customer preferences correspond to one or more of the received sender criteria; and providing, by the processing equipment of the delivery service via an electronic interface, a plurality of first or second hash values of delivery addresses on the generated third plurality of delivery addresses. However, it is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. See In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
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.
Claims 1-11 and 20 are 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the encoded value" in “receiving, in item processing equipment, an item having the encoded value thereon.” There is insufficient antecedent basis for this limitation in the claim.
Claim 1 further recites the limitation “the database” in “associating, in the database, the first cryptographic hash with the delivery address.” There is insufficient antecedent basis for this limitation in the claim.
Claims 2-11 are also rejected due to their dependency on at least claim 1.
Claim 20 recites the limitation " the determined delivery preference information" in “wherein the determined delivery preference information comprises geographically related delivery preference information.” There is insufficient antecedent basis for this limitation in the claim.
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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. 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 1, 3-10, and 12-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Logan et al. (US 20050259658 Logan) in view of Payne et al. (USP 7204415 Payne).
Regarding claims 1, 12, and 16, Logan discloses: A system and methods of processing physical items to be delivered, comprising: receiving, in one or more processors, a virtual address comprising data defined by a recipient that is other than a physical address or a mailing address of the recipient, the recipient having a delivery address (Fig. 0041-0047);
storing, in a memory, the first cryptographic hash (Fig. 1, 0041-0046);
associating, in the database, the first cryptographic hash with the delivery address (Fig. 1, 0043-0046, 0049);
receiving, in item processing equipment, an item having the encoded value thereon (0054-0059, 0072, 0081);
reading, by the item processing equipment, the encoded value on the item (0054-0059, 0072, 0081);
and determining, by the one or more processors, a delivery address for the item, wherein the delivery address for the item is the delivery address associated with the corresponding first cryptographic hash (Fig. 1, 0052, 0054-0059, 0072).
Logan further discloses (for claim 12): associating the first hash with delivery preference information; determining the delivery preference information for the item to be delivered, wherein the delivery preference information for the item to be delivered is the delivery preference information associated with the corresponding first hash; and providing delivery instructions for the item to be delivered based on the determined delivery preference information (0049, 0060-0064).
Logan further discloses (for claim 16): applying indicia of the delivery address to the item to be delivered (0057-0059).
Logan does not disclose: generating, by the one or more processors, a first cryptographic hash of at least the virtual address;
generating a second cryptographic hash based on the read encoded value; and
querying the memory using the second cryptographic hash to identify a corresponding first cryptographic hash.
However, in the same field of endeavor, Payne discloses: generating, by the one or more processors, a first cryptographic hash of at least the virtual address (Claim 1, Fig. 2, Col 2 line 4-11, Col 5 line 11-33);
generating a second cryptographic hash based on the read encoded value (Claim 7, Fig. 4, Col 6 line 46-57); and
querying the memory using the second cryptographic hash to identify a corresponding first cryptographic hash (Fig. 4, Col 6 line 58-Col 7 line 8).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claims 1, 12, and 16 disclosed by Logan by including generating a hash for each address, generating a second hash based on read data, and querying/searching using the second hash to identify a corresponding hash and address as disclosed by Payne. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element (the data structure/table and virtual address of Logan) for another (the data structure/table and hash of Payne) to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Regarding claims 3 and 17, Logan in view of Payne disclose all limitations of claim 1 and 16. Logan further discloses: wherein reading, by the item processing equipment, the encoded value on the item comprises imaging, by an optical reader, a surface of the item (0055-0057).
Regarding claim 4, Logan in view of Payne disclose all limitations of claim 3. Logan further discloses: wherein reading, by the item processing equipment, the encoded value on the item comprises analyzing the image of the surface of the item using an optical character recognition device (0055-0057).
Regarding claims 5 and 18, Logan in view of Payne disclose all limitations of claims 1 and 17. Logan further discloses: printing a mailing label to be applied to the item, wherein the mailing label has displayed thereon indicia of the delivery address associated with the item; and applying, by the item processing equipment, the printed mailing label to the item (0057-0058).
Regarding claim 6, Logan in view of Payne disclose all limitations of claim 1. Logan further discloses: wherein the delivery address comprises one of a mailing address or a physical address (0054-0057).
Regarding claim 7, Logan in view of Payne disclose all limitations of claim 1. Logan further discloses: wherein the virtual address comprises data other than a name of an intended recipient of the item and other than geographic indicia (0041, 0072-0074).
Regarding claim 8, Logan in view of Payne disclose all limitations of claim 1. Logan further discloses: wherein the virtual address comprises character data previously received from the intended recipient of the item (0041, 0072-0074).
Regarding claims 9 and 19, Logan in view of Payne disclose all limitations of claims 1 and 16. Logan further discloses: wherein the database further stores data indicative of delivery preferences associated with at least one category and the first cryptographic hash (0049, 0060-0064).
Regarding claims 10, 13, and 19, Logan in view of Payne disclose all limitations of claims 9, 12, and 17. Logan further discloses: determining, by the one or more processors, a category associated with the item to be delivered; accessing delivery preferences associated with the first cryptographic hash from the database; and providing delivery instructions for the item based on the delivery preferences and the determined category (0049, 0060-0064).
Regarding claims 14 and 20, Logan in view of Payne disclose all limitations of claim 12 and 16. Logan further discloses: wherein the determined delivery preference information comprises geographically related delivery preference information (0062-0064).
Regarding claim 15, Logan in view of Payne disclose all limitations of claim 12. Logan further discloses: applying indicia corresponding to the delivery instructions based on the determined delivery preference information to the item to be delivered (0057-0059).
Claim 2 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Logan in view of Payne as applied to claim 1 above, and further in view of Ksiazek (US 20110066281 Ksiazek) and Pintsov et al. (US 20060079991 Pintsov).
Regarding claim 2, Logan in view of Payne discloses all limitations of claim 1. Logan further discloses: redirecting the item by the item processing equipment based on the determined delivery address (0054-0059).
Logan in view of Payne does not disclose: prior to attempting delivery of the item, generating, by the one or more processors, an instruction...and coding, by the item processing equipment, the instruction in a barcode.
However, Ksiazek discloses: prior to attempting delivery of the item, generating, by the one or more processors, an instruction...and coding, by the item processing equipment, the instruction in a barcode (Fig. 2, Fig. 3a-3b, 0038-0039, 0043-0044).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 2 disclosed by Logan in view of Payne by including generating and coding an instruction in a barcode as disclosed by Ksiazek. One of ordinary skill in the art would have been motivated to make this modification to specify particular service to be executed upon a mail item (Ksiazek 0039).
Logan in view of Payne and further in view of Ksiazek does not disclose: ...an instruction to not return undeliverable mail in response to an undeliverable indication.
However, in the same field of endeavor, Pintsov discloses: an instruction to not return undeliverable mail in response to an undeliverable indication (Fig. 2, 0057).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 2 disclosed by Logan in view of Payne and further in view of Ksiazek by including an instruction to not return undeliverable mail as disclosed by Pintsov. One of ordinary skill in the art would have been motivated to make this modification as a simple substitution of one known element for another to obtain predictable results (KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007)).
Claim 11 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Logan in view of Payne as applied to claim 1 above, and further in view of Klingenberg et al. (US 20070005452 Klingenberg).
Regarding claim 11, Logan in view of Payne disclose all limitations of claim 1.
Logan in view of Payne does not disclose: providing, by the one or more processors, a vetted preferences designation for indication on physical items sent out; and
marking, by the item processing equipment, the item with a validating indicia for the vetted preferences designation by the delivery service.
However, in the same field of endeavor, Klingenberg discloses: providing, by the one or more processors, a vetted preferences designation for indication on physical items sent out (Fig. 2, 0096-0099);
and marking, by the item processing equipment, the item with a validating indicia for the vetted preferences designation by the delivery service (Fig. 3, 0101-0104).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify claim 11 disclosed by Logan in view of Payne by including providing and marking an item with indicia indicating preference designations as disclosed by Klingenberg. One of ordinary skill in the art would have been motivated to make this modification to allow redirecting mail items based on personalized delivery preferences (Klingenberg 0104).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Virtanen et al. (US 20100281125) generally discloses a system for enabling delivery of a postal dispatch using a virtual address which is converted to a corresponding delivery address and delivered in accordance with a list of preferences.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR RAK whose telephone number is (571)270-1575. The examiner can normally be reached Monday-Friday 11:00-7:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached at (571)-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/T.R./Examiner, Art Unit 3697
/JOHN W HAYES/Supervisory Patent Examiner, Art Unit 3697