DETAILED ACTION
Claim Status
This is first office action on the merits in response to the application filed on 1/3/2025.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 1/3/2025 and 7/18/2025 is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-13, 15-19, and 21 of copending application 18/581,142. Although the claims at issue are not identical, they are not patentably distinct from each other because it recites almost same and equivalent features. Since copending application 18/581,142 and the claims at issue of the present application perform similar functions, it would have been obvious to a person of ordinary skill in the art to modify claims 1-13, 15-19, and 21 of copending application 18/581,142 by removing the additional features. It is well settled that omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karison, 136 USPQ 184 (CCPA 1963) Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Thus, 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 § 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Under the Step 1 of the Section 101 analysis, Claims 1-9 are drawn to a method which is within the four statutory categories (i.e., a process), Claims 10-15 are drawn to a system which is within the four statutory categories (i.e. a machine), and Claims 16-20 are drawn to a non-transitory computer-readable medium which is within the four statutory categories (i.e., a manufacture).
Since the claims are directed toward statutory categories, it must be determined if the claims are directed towards a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea). Based on consideration of all of the relevant factors with respect to the claim as a whole, claims 1-20 are determined to be directed to an abstract idea. The rationale for this determination is explained below:
Regarding Claims 1, 10, and 16:
Claims 1, 10, and 16 are drawn to an abstract idea without significantly more. The claims recite “receiving, at a computer system, at least one document establishing an identity of an attorney; verifying, at the computer system, the attorney as a verified attorney based on the received at least one document; creating, at the computer system, a user account for the verified attorney; associating, at the computer system, the user account of the verified attorney with an incarcerated individual, wherein an attorney-client privilege applies to the verified attorney having the user account and the incarcerated individual; receiving, at the computer system by the user account of the verified attorney, a request to mail a physical mail item to the incarcerated individual; creating, via the computer system, a unique code in response to the request, the unique code including a QR code; and associating the generated unique code with the user account of the verified attorney and with the incarcerated individual.”
Under the Step 2A Prong One, the limitations, as underlined above, are processes that, under its broadest reasonable interpretation, cover Certain Methods Of Organizing Human Activity such as managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). For example, but for the “computer system” and “QR code” language, the underlined limitations in the context of this claim encompass the human activity. A person could receive and verify an identity of attorney. The person could then create a user account and associate it with the attorney and an incarcerated individual. Finally, the person could receive a request, and create and associate a unique code with the incarcerated individual, as in a typical interactions among people.
Under the Step 2A Prong Two, this judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements – “A method, comprising:”, “A system, comprising: a database; a processor; and a non-transitory computer-readable storage medium having instructions stored which, when executed by the processor, cause the processor to perform operations comprising:”, “A non-transitory computer-readable storage medium having instructions stored which, when executed by a processor, cause the processor to perform operations comprising:”, “computer system”, and “QR code”. The additional elements are recited at a high-level of generality (i.e., performing generic functions of an interaction) such that it amounts no more than mere instructions to apply the exception using a generic computer component, merely implementing an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. Additionally, regarding the specification and claims, there is no improvement in the functioning of a computer or an improvement to other technology or technical field present, there is no applying or using the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition present, there is no implementing the judicial exception with or using the judicial exception in conjunction with a particular machine or manufacture that is integral to the claim present, there is no effecting a transformation or reduction of a particular article to a different state or thing present, and there is no applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment present such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Accordingly, these additional elements, individually or in combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
Under the Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements in the process amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Regarding Claims 2-9, 11-15, and 17-20:
Dependent claims 2-4 and 17 only further elaborate the abstract idea and do not recite additional elements.
Dependent claims 5-9, 11-15, and 18-20 include additional limitations, for example, “scanning”, “scanner”, “computer system”, and “scan” (Claims 5 and 14); “scanning”, “scanner”, “communicatively coupled to the computer system”, and “scanned unique code” (Claims 6 and 15); “computer system” (Claims 7, 11, and 18); and “computer system” (Claims 8, 12, and 19); “computer system”, “email”, and “text message” (Claims 9, 13, and 20), but none of these limitations are deemed significantly more than the abstract idea because, as stated above, they require no more than generic computer structures or signals to be executed, and do not recite any Improvements to the functioning of a computer, or Improvements to any other technology or technical field.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation or implementing the judicial exception on a generic computer.
Therefore, whether taken individually or as an ordered combination, claims 2-9, 11-15, and 17-20 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-7, 10-11, and 14-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Passe (US 10135832 B1; already of record in IDS) in view of Dearing (US 20130024326 A1; already of record in IDS).
Regarding Claims 1, 10, and 16, Passe teaches A method, comprising: A system, comprising (Passe: Abstract): a database; a processor; and a non-transitory computer-readable storage medium having instructions stored which, when executed by the processor, cause the processor to perform operations comprising: A non-transitory computer-readable storage medium having instructions stored which, when executed by a processor, cause the processor to perform operations comprising (Passe: Abstract; Col. 1, line 63 ~ Col. 2, line 8):
receiving, at a computer system, at least one document establishing an identity of an attorney; verifying, at the computer system, the attorney as a verified attorney based on the received at least one document (Passe: Col. 8, lines 49-64; Col. 9, line 60 ~ Col. 10, line 15 teach(es) The database device can maintain a database of registered users to whom communications, e.g., through the first communication client device and the first communication server device, may be privileged; The validation terminal device can be, for example, a desktop computer, a laptop computer, a tablet, a smartphone, or the like that can be used to validate information of registered users in the database); creating, at the computer system, a user account for the verified attorney; associating, at the computer system, the user account of the verified attorney with an incarcerated individual, wherein an attorney-client privilege applies to the verified attorney having the user account and the incarcerated individual; receiving, at the computer system by the user account of the verified attorney, a request to mail a [physical] mail item to the incarcerated individual (Passe: Col. 10, lines 26-49; Col. 16, line 64 ~ Col. 17, line 15; Col. 18, lines 4-19 teach(es) In the context of FIG. 1, a user, e.g., a resident of the controlled-environment facility (like an inmate of a jail or prison), accesses the user's account for communication using the client application operating on the first communication client device, and composes and addresses a communication, such as an email message, SMS text, direct message, instant message, or the like, using the client application; The attorney accesses her account of attorney@biglaw.com using an email client application on the second communication client device, which can be a computer, a tablet, or the like. The attorney composes an email and addresses it to her inmate client at inmate@facility.com. The attorney has registered her email address attorney@biglaw.com on the database on the database device, which was validated); …; and associating the generated unique code with the user account of the verified attorney and with the incarcerated individual (Passe: Col. 10, lines 26-49; Col. 11, lines 61-67).
However, Passe does not explicitly teach physical mail item and creating, via the computer system, a unique code in response to the request, the unique code including a QR code.
Dearing from same or similar field of endeavor teaches physical mail item (Dearing: Paragraph(s) 0053, 0103, 0156-0158, 0169 teach(es) The mailing service can be configured to perform various services on mail transmitted by the mailer. Such services are represented by service modules. Services can include but are not limited to sorting, tracking, address correction, mail return, mail forwarding, and mail delivery services), and creating, via the computer system, a unique code in response to the request, the unique code including a QR code (Dearing: Fig. 22B; Paragraph(s) 0138, 0152 teach(es) an image can be embedded in a computer readable code, such as, for example, a barcode, or a quick response code (“QR code”); the physical copy may have the QR code on an exterior thereof).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of Passe to incorporate the teachings of Dearing for physical mail item and creating, via the computer system, a unique code in response to the request, the unique code including a QR code.
There is motivation to combine Dearing into Passe because Dearing’s teachings of QR code would facilitate processing information of mail piece (Dearing: Paragraph(s) 0138).
Regarding Claim 2, the combination of Passe and Dearing teaches all the limitations of claim 1 above; however the combination does not explicitly teach further comprising: causing the unique code to be displayed on an exterior of the physical mail item; and mailing the physical mail item to the incarcerated individual associated with the unique code.
Dearing further teaches further comprising: causing the unique code to be displayed on an exterior of the physical mail item; and mailing the physical mail item to the incarcerated individual associated with the unique code (Dearing: Paragraph(s) 0083 teach(es) a mailer prints the intelligent barcode on a label, and then affixes the label to an outer surface of the distribution item).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dearing for further comprising: causing the unique code to be displayed on an exterior of the physical mail item; and mailing the physical mail item to the incarcerated individual associated with the unique code.
There is motivation to combine Dearing into the combination of Passe and Dearing because Dearing’s teachings of QR code would facilitate processing information of mail piece (Dearing: Paragraph(s) 0138, 0083).
Regarding Claim 3, the combination of Passe and Dearing teaches all the limitations of claim 2 above; however the combination does not explicitly teach wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on the exterior of the physical mail item.
Dearing further teaches wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on the exterior of the physical mail item (Dearing: Paragraph(s) 0083, as stated above with respect to claim 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dearing for wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on the exterior of the physical mail item.
There is motivation to combine Dearing into the combination of Passe and Dearing because Dearing’s teachings of QR code would facilitate processing information of mail piece (Dearing: Paragraph(s) 0138, 0083).
Regarding Claim 4, the combination of Passe and Dearing teaches all the limitations of claim 2 above; however the combination does not explicitly teach wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on a label, and affixing the label to the exterior of the physical mail item.
Dearing further teaches wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on a label, and affixing the label to the exterior of the physical mail item (Dearing: Paragraph(s) 0083, as stated above with respect to claim 2).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dearing for wherein the causing the unique code to be displayed on an exterior of the physical mail item includes printing the unique code on a label, and affixing the label to the exterior of the physical mail item.
There is motivation to combine Dearing into the combination of Passe and Dearing because Dearing’s teachings of QR code would facilitate processing information of mail piece (Dearing: Paragraph(s) 0138, 0083).
Regarding Claims 5 and 14, the combination of Passe and Dearing teaches all the limitations of claims 2 and 10 and the physical mail item above; and Passe further teaches further comprising …, and determining, …, the identity of the attorney sending the [physical] mail item and the identity of the incarcerated individual to whom the [physical] mail item is addressed (Passe: Col. 10, lines 26-49; Col. 16, line 64 ~ Col. 17, line 15; Col. 18, lines 4-19, as stated above with respect to claim 1).
However, the combination of Passe and Dearing does not explicitly teach scanning the unique code on the exterior of the physical mail item, by using a scanner connected to the computer system.
Dearing further teaches scanning the unique code on the exterior of the physical mail item, by using a scanner connected to the computer system, and …based on the scan Dearing: Paragraph(s) 0120-0121 teach(es) the computing device may scan/process the horizontal lines of the bit matrix to locate an area of the image with the correct number of distinct vertical lines; The computing device may determine a value indicating partially or fully decoded barcode data).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dearing for scanning the unique code on the exterior of the physical mail item, by using a scanner connected to the computer system.
Regarding Claims 6 and 15, the combination of Passe and Dearing teaches all the limitations of claims 2 and 10 above; however the combination does not explicitly teach further comprising scanning the unique code on the exterior of the physical mail item, by using a scanner communicatively coupled to the computer system, and disabling the scanned unique code for further use.
Dearing further teaches further comprising scanning the unique code on the exterior of the physical mail item, by using a scanner communicatively coupled to the computer system, and disabling the scanned unique code for further use (Dearing: Paragraph(s) 0072, 0085, 0121 teach(es) the computing device determines whether the response included an indication that the information item was invalid; the barcode 40 may be configured to include tracking information, while the barcode 50 may be configured to include sorting information. A mailer may need to place both barcodes 40 and 50 on a single distribution item to allow the mailing service to sort the distribution item when it is first introduced into the mailing system, as well as allow the mailing service and the mailer to track the distribution item 8 along its route to an ultimate destination).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dearing for further comprising: scanning the unique code on the exterior of the physical mail item, by using a scanner communicatively connected to the computer system, and disabling the scanned unique code for further use.
There is motivation to combine Dearing into the combination of Passe and Dearing because Dearing’s teachings of barcodes with tracking and sorting information would facilitate processing information of mail piece (Dearing: Paragraph(s) 0072, 0085, 0121).
Regarding Claims 7, 11, and 18, the combination of Passe and Dearing teaches all the limitations of claims 1, 10, and 16 above; and Passe further teaches wherein the associating, at the computer system, of the user account of the verified attorney with the incarcerated individual includes verifying the attorney as having the attorney-client privilege with the incarcerated individual (Passe: Col. 8, lines 49-64 teach(es) The database device can maintain a database of registered users to whom communications, e.g., through the first communication client device and the first communication server device, may be privileged. For example, the database device can maintain a database of attorneys (for attorney-client privilege)).
Regarding Claim 17, the combination of Passe and Dearing teaches all the limitations of claim 16 above; and Passe further teaches wherein the physical mail item comprises photographs (Passe: Col. 3, lines 43-54 teach(es) Examples of these types of communication modes include non-voice communications, such as email, Short Message Service (SMS) text, direct message, instant message, or the like, although various files, such as images, video recordings, and/or audio recordings (which may include voiced communications) may be attached to such communications).
Claim(s) 8-9, 12-13, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Passe in view of Dearing, as applied to claims 1, 10, and 16 above, and in further view of Dalley (US 20200125838 A1; already of record in IDS).
Regarding Claims 8, 12, and 19, the combination of Passe and Dearing teaches all the limitations of claims 7, 11, and 18 above; and Passe further teaches wherein the verifying, at the computer system, of the attorney as having the attorney-client privilege with the incarcerated individual includes … (Passe: Col. 8, lines 49-64; Col. 9, line 60 ~ Col. 10, line 15, as stated above with respect to claim 1).
However, the combination of Passe and Dearing does not explicitly teach using a single-factor authentication process or a multi-factor authentication process.
Dalley from same or similar field of endeavor teaches using a single-factor authentication process or a multi-factor authentication process (Dalley: Paragraph(s) 0092, 0099, 0084 teach(es) multi-factor authentication).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dalley for using a single-factor authentication process or a multi-factor authentication process.
There is motivation to combine Dalley into the combination of Passe and Dearing because Dalley’s teachings of multi-factor authentication would facilitate verifying entities such as inmate and attorney (Dalley: Paragraph(s) 0092, 0099).
Regarding Claims 9, 13, and 20, the combination of Passe and Dearing teaches all the limitations of claims 1, 10, and 16 above; and Passe further teaches wherein a [multi-factor] authentication process is used for determining the attorney to be the verified attorney, said [multi-factor] authentication process including requesting, via the computer system, the attorney to submit proof of a law license of the attorney and an additional piece of information, said additional piece of information being at least one selected from the group consisting of a copy of a government-issued identification card of the attorney, a copy of an employment card of the attorney, a text message verification code sent to the attorney, an email verification code sent to the attorney, a verification code sent by mail to the attorney, the attorney's social security number, and the attorney's date of birth, and wherein the verifying, at the computer system, of the attorney as being a verified attorney based on the [multi-factor] authentication process includes verifying, at the computer system, the law license of the attorney as being valid and verifying, at the computer system, the additional piece of information as being associated with the attorney (Passe: Col. 8, lines 49-64; Col. 9, line 60 ~ Col. 10, line 15).
However, the combination of Passe and Dearing does not explicitly teach the multi-factor authentication.
Dalley from same or similar field of endeavor teaches the multi-factor authentication (Dalley: Paragraph(s) 0092, 0099, 0084 teach(es) multi-factor authentication).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the teachings of the combination of Passe and Dearing to incorporate the teachings of Dalley for the multi-factor authentication.
There is motivation to combine Dalley into the combination of Passe and Dearing because Dalley’s teachings of multi-factor authentication would facilitate verifying entities such as inmate and attorney (Dalley: Paragraph(s) 0092, 0099).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Torgersrud (US 20160112424 A1) teaches Two-Way Communications System For Residents Of Secure Facility.
Rae (US 20080057976 A1) teaches Wireless Communications Control In A Controlled-Environment Facility.
Seyfetdinov (US 20100189228 A1) teaches Electronic Notification In Institutional Communication.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CLAY LEE whose telephone number is (571)272-3309. The examiner can normally be reached Monday-Friday 8-5pm 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, Neha Patel can be reached at (571)270-1492. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CLAY C LEE/Primary Examiner, Art Unit 3699