DETAILED ACTION
1. This is the first action on the merits relating to U.S. Application Serial No. 19/016,846 filed on January 10, 2025. Currently claims 1-20 remain in the examination.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
3. Applicant’s disclosure of related application information as described in paragraph [0001] is acknowledged. Applicant may update the information.
Claim Objections
4. Claims 1, 11, and 14 are objected to because of the following informalities:
Please remove all occurrences of “•” from these claims.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. 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.
6. Claim 9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 9, “determining a probability score of a candidate asset event, wherein the asset event is determined to be the candidate asset event when the probability score satisfies a predetermined threshold” renders the claim vague and indefinite. The claim is written so cryptically, and therefore, it is unclear what is being claimed.
Appropriate correction/clarification is required. Also indicate in the specification where this limitation is described.
Claim Rejections - 35 USC § 102
7. 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.
8. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
9. Claims 1, 2, 4-13, 15, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2012/0084222 A1 to Zimberoff et al. (hereinafter “Zimberoff”).
Regarding claims 1 and 11, Zimberoff teaches a system and the method for tracking shipments (see paragraph 0003); comprising receiving a digital version of the item from user using the interface as shown in figure 3F as the user enters item (asset) related information; storing the label production data in the data repository 415 (see paragraph 0058 and figure 4); generating shipment barcode containing item related information (see paragraph 0092); and transmitting shipping label information to the printer (see paragraph 0076, 0078 and 0097); determining that the item is ready for pickup (see abstract and paragraphs 0030 and 0047). Initiating the sending process is an asset event for the sender, and any steps in figure 2 and figure 5 is action triggered by the asset event. Zimberoff system utilizes a database system (see paragraphs 0004, 0027 and 0067), which logs every transaction with a timestamp, and creating shipping label would comprise a timestamp when the label is created.
Regarding claim 2, the recipient is notified of the item being shipped (see paragraph 0097) and notification is received by a recipient client device such as a smart phone (see paragraph 0048)
Regarding claim 4, the destination shipping address is a geolocation (see paragraphs [0002]-[0004] and figures 3B and 3G).
Regarding claim 5, the shipping application may use web-based application which may produce HTML pages for the shipment information (see paragraph 0045 and figures 3C-3E).
Regarding claim 6, notifying the recipient of the shipment status (see paragraph 0097) can be interpreted as one of asset event.
Regarding claim 7, a machine-readable code is generated regarding the item (see figure 1B and paragraph [0016]-[0024]), and the recipient scans the machine-readable code (see paragraph 0048).
Regarding claims 8 and 20, communication may be done via SMS message (see paragraph 0096) or email (see paragraphs 0076 and 0106). Any communicating means can be interpreted as a secondary channel.
Regarding claim 9, when a shipping label is not successfully created, each cause for the error condition can be interpreted as a candidate asset event (see paragraph 0078).
Regarding claim 10, the system includes an API (see paragraphs 0058, 0061, and 0062) for the functionalities of the system.
Regarding claim 12, the system includes a printer 111 on a client (for both sender and recipient) machine (see figure 1A and paragraph 0015).
Regarding claim 13, the embodiment as shown in figure 1A can be used by the intermediaries or third party (see paragraph 0004).
Regarding claim 15, the estimated transit time (see paragraph 0019) may indicate various delivery class (also see the last line of Table 3 for transit time on page 12).
Regarding claim 17, output of shipping label includes printing (see block 204 of figure 2 and paragraph 0027). The printing of the label can be one of asset event.
Regarding claim 18, although it may not be explicitly discussed, the shipping label 116 (see paragraph 0019) may include fee/cost information.
Regarding claim 19, machine-readable code in the shipping label 116 is programmatically generated (see paragraph 0021 and thereafter).
10. Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable over US 2012/0084222A1 to Zimberoff et al. in view of US 2018/0240066 A1 to Streebin et al. (hereinafter “Streebin”).
The teachings of Zimberoff have been discussed above.
Zimberoff, however, fails to specifically teach or fairly suggest that the sender is notified after subscribing to by web-hook.
Streebin Ming teaches a method and system for aggregate shipping (see abstract). And the user receives shipping data using webhook automatically (see paragraphs 0028 and 0029).
In view of Streebin’s teaching, it would have been obvious to an ordinary skill in the art at the time the invention was made to employ well-known webhook application to the teachings of Zimberoff in order to notify the user automatically and in real time manner.
Double Patenting
11. 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.
12. Claims 1, 3, 11, 12, and 14 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 of U.S. Patent No. US 11,113,657 B2 to Avidar et al. (hereinafter “657 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other as the claims comparison below would show.
Instant Application
657 patent
Claim 1
A method, comprising:
determining an asset identifier for an asset that is received from a sender,
wherein the asset is associated with a recipient;
determining an asset event based on the asset identifier and a timestamp; and triggering an action in response to the receipt of the asset event by providing the asset event to the sender.
Claim 1
A method for tracking an asset, comprising:
receiving a digital version of the asset associated with a sender;
determining an asset identifier for the asset;
generating an asset barcode based on the asset identifier;
transmitting the digital version to a printer, wherein the printer prints the asset and the asset barcode;
determining a picked-up event for the asset, wherein the picked-up event represents asset pick-up from the printer by a delivery service, wherein the picked-up event is determined based on an invoice received from the delivery service, wherein the invoice comprises a first batch identifier and a pick-up timestamp, wherein the asset is associated with a second batch identifier, and wherein determining the picked-up event comprises associating the asset with the pick-up timestamp when the first batch identifier and the second batch identifier match; and notifying the sender of the picked-up event.
Claim 3
The method of Claim 1, further comprising receiving a notification comprising a batch identifier from a delivery service, wherein the asset event is further determined based on the batch identifier.
See the underlined section of claim 1 above.
Claim 11
A system, comprising:
a processing system, configured to: determine an asset identifier for an asset that is received from a sender, wherein the asset is associated with a recipient;
determine an asset event based on the asset identifier and a timestamp; and
trigger an action in response to the receipt of the asset event by providing the asset event to the sender.
Claim 15
A system for tracking an asset, comprising
a processing system configured to: receive a digital version of the asset associated with a sender; determine an asset identifier for the asset; generate an asset barcode based on the asset identifier;
transmit the digital version to a printer, wherein the printer prints the asset and the asset barcode;
determine a picked-up event for the asset, wherein the picked-up event represents asset pick-up from the printer by a delivery service,
wherein the picked-up event is determined based on an invoice received from the delivery service, wherein the invoice comprises a first batch identifier and a pick-up timestamp, and wherein the asset is associated with a second batch identifier, wherein determining the picked-up event comprises associating the asset with the pick-up timestamp when the first batch identifier and the second batch identifier match; and notify the sender of the picked-up event.
Claim 12
The system of Claim 11, wherein the processing system is further configured to route the asset to a printer that prints the asset.
See the underlined section of claim 15 above.
Claim 14
The system of Claim 12, wherein the processing system is further configured to:
associate the asset identifier for the asset with a first batch identifier generated by the printer; and
determine a picked-up event for the asset, comprising associating the asset with a pick-up timestamp when the first batch identifier and a second batch identifier match.
See the underlined section of claim 15 above.
As shown in the claim comparison above, it is the Examiner’s opinion that the limitation in claim 3 (claims 1-3) of the instant application is fully disclosed in claim 1 of 657 patent, and the limitation of claim 14 (claims 11-12-14) is fully disclosed in claim 15 of 657 patent.
Conclusion
The pertinent prior arts made of record but not relied are listed in the attached form PTO-892. These are considered pertinent to Applicant's disclosure. Applicant is respectfully suggested to carefully review these references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ahshik Kim whose telephone number is (571)272-2393. The examiner can normally be reached between the hours of 8:00 AM to 5:00 PM Monday thru Friday. Examiner’s fax phone number is (571)273-2393.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Michael G. Lee, can be reached on (571)272-2398. The fax phone number for this Group is (571)273-8300.
Communications via Internet e-mail regarding this application, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used by the applicant and should be addressed to [ahshik.kim@uspto.gov].
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/AHSHIK KIM/Primary Examiner, Art Unit 2876
January 29, 2026