DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,782,662. Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claim falls within the scope of the examined claim. The following charts illustrate the overlap in subject matter:
Instant Claim 1
Claim 1 (U.S. Patent No. 11,782,662)
A system, configured to:
A system, configured to:
receive an order comprising a set of digital assets, each associated with a different delivery address;
receive an order comprising a set of digital assets, each associated with a different delivery address;
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region;
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region, wherein the carrier facilities are arranged in a hierarchy;
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch;
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch;
select a print partner for each batch, wherein the print partner is located proximal the respective delivery region; and
select a print partner for each batch, wherein the print partner is located proximal the respective delivery region;
send the digital assets within a batch to the print partner when a threshold condition is met, wherein the print partner prints physical analogs of the digital assets.
send the digital assets within a batch to the print partner when a threshold condition is met, wherein the print partner prints physical analogs of the digital assets; and
when the threshold condition is not met, iteratively re-batch digital assets from a batch into other batches associated with carrier facilities at higher hierarchical levels, until a second threshold condition is met.
Further, claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No.12,223,214. Although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims fall within the scope of the examined claim. The following charts illustrate the overlap in subject matter:
Instant Claim 1
Claim 1 (U.S. Patent No. 12,223,214))
A system, configured to:
A system, configured to:
receive an order comprising a set of digital assets, each associated with a different delivery address;
receive an order comprising a set of digital assets, each associated with a different delivery address;
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region;
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region, wherein the carrier facilities are arranged in a hierarchy;
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch;
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch, wherein each of the digital assets is further batched into one of the set of batches based on the hierarchy;
select a print partner for each batch, wherein the print partner is located proximal the respective delivery region; and
select a print partner for each batch, wherein the print partner is located proximal the respective delivery region;
send the digital assets within a batch to the print partner when a threshold condition is met, wherein the print partner prints physical analogs of the digital assets.
send the digital assets within a batch to the print partner when a threshold condition is met, wherein the print partner prints physical analogs of the digital assets; and
Claim Rejections - 35 USC § 103
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 is rejected under 35 U.S.C. 103 as being unpatentable over Uhlig (U.S. Patent No. 8,462,371) in view of Latta (U.S. Patent No. 6,674,038)
Regarding claim 1, Uhlig (U.S. Patent No. 8,462,371) discloses:
A system, configured to:
receive an order (column 3, lines 37-42, column 4, lines 4-11, column 4, lines 63-67, and column 5, lines 5-18, a business document is specified for production) comprising a set of digital assets (column 6, line 22 through column 7, line 16, variable content includes a fixed first content and a variable second content used to produce a plurality of documents), each associated with a different delivery address (column 5, lines 5-18, 55-67, column 6, lines 55-67, column 7, lines 32-41, the order is associated with a group of contacts or an address book);
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region (column 8, lines 14-20 and column 9, lines 4-13, a post office or courier is used for endpoint delivery for the documents; see column 7, lines 39-41 regarding multiple different documents being delivered to different countries);
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch (column 7, lines 32-41, the documents processed in different languages are delivered to different countries);
select a print partner for each batch, wherein the print partner is located proximal the respective delivery region (column 8, lines 7-39, the print facility can be selected based on address/geographic distance from the endpoint to minimize delivery time); and
send the digital assets within a batch to the print partner when a threshold condition is met, wherein the print partner prints physical analogs of the digital assets (column 7, lines 32-41 and column 8, lines 54-59, the specification is processed before the transmission to the print facility for production)
Even assuming arguendo that Uhlig does not explicitly disclose:
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region;
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch;
Latta (U.S. Patent No. 6,674,038) discloses:
determine a set of batches, each associated with a carrier facility, wherein each carrier facility services a delivery region (column 11, lines 3-41, the mail is sorted into groups based on destination);
batch each of the digital assets into one of a set of batches based on the respective delivery address falling within the delivery region associated with the respective batch (column 11, lines 3-60, the mail is batched and sent to the group corresponding to its address)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine the system of Latta with the system of Uhlig such that the system would have been configured to determine a set of batches, associated with region associated carrier facilities, and batch the digital assets based on delivery address as described in Latta. The suggestion/motivation would have been in order to implement a system capable of achieving “allocation of cost savings for members of a network of processing centers” (column 8, lines 21-23 of the Latta reference).
References Cited but not Relied Upon
Field (U.S.P.G. Pub. No. 2003/0218770) discloses a system for utilizing excess printing capacity with a printing network that distributes standardized print jobs to print partners for completion. See Abstract. Included in the parameters used for determining the print partners is geographic location, particularly postal zones. See paragraph [0030].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R WALLACE whose telephone number is (571)270-1577. The examiner can normally be reached Monday-Friday from 8:30-5 PM.
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/JOHN R WALLACE/ Primary Examiner, Art Unit 2674
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