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 .
Status of Claims
This action is in response to the reply filed December 08, 2025.
Claims 1, 2, and 4-6 have been amended.
Claim 8 has been cancelled.
Claims 12-15 have been newly submitted.
Claims 1-7 and 9-15 are currently pending and have been examined.
Response to Arguments
Applicant’s arguments filed December 08, 2025 have been fully considered but they are not persuasive.
Regarding the previous rejection under 35 USC 103, Applicant submitted the following remarks:
Consequently, the above claimed clarification requires the operation of Applicant's claimed "mail piece sortation system" based on "the thickness determination encoded in the ICB of each mail piece." At page 3, in mapping the alleged teaching of Isles to Applicant's previously pending claim 1, the Office Action states that "[0029] [of Isles] tray break points are determined by calculating the thickness of a group of mail pieces based on the contents of the mail pieces)." (Emphasis added). Accordingly, the Office Action acknowledges that Isles's alleged thickness determination is by ascertaining the contents. Further, Isles lists the fields required for the IMB and does not include weight/thickness. The IMB in Isles comprises a barcode identifier, service type identifier, mailer ID, unique identifier, and delivery point address code; no thickness is encoded:
Examiner respectfully disagrees. The barcode in Isles is the same as the barcode in the instant claims. The instant specification explicitly defines in [0007] that an “information containing barcode” or ICB is the USPS One Code solutions INTELLIGENT MAIL BARCODE. According to the USPS this barcode does not and cannot carry thickness information in the manner claimed by Applicant. As explained in the rejections under 35 USC 112(a) and 35 USC 112(b), the instant claims do have support in the specification for the argument made by Applicant. In other words, if Isles does not disclose the claimed barcode, then neither does Applicant. For the purposes of compact prosecution, the thickness determination encoded therein has been interpreted to mean the thickness determination retrieved using the ICB information.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-7 and 9-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 4-5, 12, and 13 contain an ICB with a thickness determination encoded therein which fails to comply with the written description requirement. The instant specification explicitly defines in [0007] that an “information containing barcode” or ICB is the USPS One Code solutions INTELLIGENT MAIL BARCODE. According to the USPS this barcode does not and cannot carry thickness information encoded therein as claimed by Applicant. According to USPS an Intelligent Mail Barcode contains, in order, a 2-digit barcode identifier, a 3-digit service type identifier, a 6- or 9-digit mailer identifier, a 6- or 9-digit serial number, and a delivery point zip code that is 0, 5, 9, or 11 digits. See Intelligent Mail Barcode Technical Resource Guide, USPS, page 7, retrieved from https://postalpro.usps.com/node/221, retrieved on January 27, 2026, published January 01, 2009. In other words, there are no digits in an IMB/ICB for thickness determinations. The instant specification discusses an IMB/ICB with thickness as follows: [0027], [0042] IMB/ICB is decoded then the thickness is looked up in the appropriate database; [0019], [0043], [0045], [0046], [0047], [0048] ICB “contains” a thickness determination; [0019], [0043], [0045], [0046], [0047], [0048] tracking thickness via the stored ICB information. There is no written description for how to modify an IMB to encode thickness information. The instant specification has no discussion of digits and only makes vague references to an ICB “containing” thickness information, which Applicant has interpreted to mean encoding, while the specification simultaneously discusses looking up thickness and determining thickness via the stored ICB information, which suggests retrieval consistent with USPS practices. Therefore, an ICB with a thickness determination encoded therein fails to comply with the written description requirement because there is no description in the specification for how to encode thickness information in an IMB/ICB.
Claims 2-7 and 13-15 depend upon claims 1 or 12 and therefore inherit the above rejection of claims 1 or 12.
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 1-7 and 9-15 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.
Claims 1, 4-5, 12, and 13 contain an ICB with a thickness determination encoded therein which fails to particularly point out and distinctly claim the subject matter. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “encoded in” in claim 1 is used by the claim to mean “retrieved by,” while the accepted meaning is “to convey symbolically.” The term is indefinite because the specification does not clearly redefine the term. For the purposes of compact prosecution, an ICB with the thickness determination encoded therein has been interpreted to mean the thickness determination retrieved by using the ICB information.
Claims 2-7 and 13-15 depend upon claims 1 or 12 and therefore inherit the above rejection of claims 1 or 12.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-6 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isles et al. (U.S. P.G. Pub. 2010/0106290 A1), hereinafter Isles.
Claim 1.
Isles discloses a mail piece sortation system comprising:
a mechanism configured for reading, storing, and utilizing an information containing barcode (ICB) printed on each mail piece being sorted, wherein the ICB comprises, for each mail piece, a thickness determination encoded therein (Isles [0006] Intelligent Mail Barcode; [0024] IMB is generated and printed on a mail piece; [0029] tray break points are determined by calculating the thickness of a group of mail pieces based on the contents of the mail pieces);
a sorter having a plurality of collection bins, wherein each bin receives mail pieces being mailed to a desired location (Isles Fig. 1 Items 170, 175, [0025] pieces diverted to reject bin or envelope stacker; [0034] reject bin for delivery points not consistent with the presort group; [0044] equipment for sorting);
a computer control mechanism configured for overseeing the operation of the sorter, and tracking, for each mail piece, the thickness of each mail piece based on the ICB (Isles Fig. 1, [0023] inserter data file is provided by the data center processor; [0024], [0029] track mail using a reference to the IDF); and
an assembly mechanism configured for assembling at least one mail tray with a number of mail pieces based on the thickness determination encoded in the ICB of each mail piece (Isles [0029] the tray break groupings are determined by the data center processor when the print file and IDF are created. Tray break tracking data is sent to the barcode post processing computer from the inserter control).
Claim 2.
Isles discloses all the elements of claim 1, as shown above. Additionally, Isles discloses:
wherein the ICB is sent to a postal agency (Isles [0029] [0030] the pallet data, tray data, and mail piece data can all be integrated by the barcode post processing computer or the central production management to create the postal authority reports and electronic data files required for a USPS full service mailing submission).
Claim 3.
Isles discloses all the elements of claim 1, as shown above. Additionally, Isles discloses:
at least one device configured to perform a determination that a mail piece is directed to a particular collection bin of the plurality of collection bins (Isles Fig. 1 Items 170, 175, [0025] pieces diverted to reject bin or envelope stacker; [0034] reject bin for delivery points not consistent with the presort group; [0044] equipment for sorting).
Claim 4.
Isles discloses all the elements of claim 1, as shown above. Additionally, Isles discloses:
wherein the computer control mechanism prevents any current mail piece to be routed to a particular collection bin based on the thickness determination encoded in the ICB (Isles Fig. 1 Items 170, 175, [0025] pieces diverted to reject bin or envelope stacker; [0034] reject bin for delivery points not consistent with the presort group; [0044] equipment for sorting).
Claim 5.
Isles discloses all the elements of claim 1, as shown above. Additionally, Isles discloses:
wherein the computer control mechanism transmits instructions to a mail piece elevator to route each mail piece to a particular collection bin based on the thickness determination encoded in the ICB (Isles [0035] if the mail piece is ok, it is sent to the envelope stacker to be put into trays for delivery to the postal authority for customer delivery).
Claim 6.
Isles discloses all the elements of claim 1, as shown above. Additionally, Isles discloses:
a commingling equipment configured to scan the ICB of each mail piece (Isles [0025] imaging system at the input to the barcode post processing system, processes mail pieces that were processed on the inserter).
Claim 12.
Isles discloses a computer-implemented method for sorting mail pieces, comprising:
reading, by a commingling equipment, an information containing barcode (ICB) printed on each mail piece, the ICB comprising, for each mail piece, a thickness determination encoded therein (Isles [0006] Intelligent Mail Barcode; [0024] IMB is generated and printed on a mail piece; [0029] tray break points are determined by calculating the thickness of a group of mail pieces based on the contents of the mail pieces);
routing, by the commingling equipment, each mail piece to a collection bin from a plurality of collection bins, based on a desired location (Isles Fig. 1 Items 170, 175, [0025] pieces diverted to reject bin or envelope stacker; [0034] reject bin for delivery points not consistent with the presort group; [0044] equipment for sorting);
tracking, by the commingling equipment, for each mail piece, the thickness based on the ICB (Isles Fig. 1, [0023] inserter data file is provided by the data center processor; [0024], [0029] track mail using a reference to the IDF); and
assembling, by the commingling equipment, at least one mail tray with a number of mail pieces based on the thickness determination encoded in the ICB of each mail piece (Isles [0029] the tray break groupings are determined by the data center processor when the print file and IDF are created. Tray break tracking data is sent to the barcode post processing computer from the inserter control).
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 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.
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.
Claim(s) 9-10, 13, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isles in view of Lee et al. (U.S. P.G. Pub. 2009/0319324 A1), hereinafter Lee.
Claim 9.
Isles discloses all the elements of claim 1, as shown above. However, Isles does not teach the following limitation, but Lee does:
wherein the signaling mechanism generates a signal to empty a particular collection bin into a mail tray based on a determination of position of an accumulation place associated with the mail tray (Lee Fig. 5 Item 505, [0041] sweep bins into mail trays and print tag to complete a mailing).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include sweeping sorted bins into trays for tag printing as taught by Lee in the system of Isles, since the claimed invention is merely a combination of old elements in the art of mail processing, 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. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to incorporate the above features and yield predictable result of Isles’s system with the improved functionality to ensure that bins do not become overly full and disrupt the ability for the sorting machine to utilize the full bin.
Claim 10.
Isles discloses all the elements of claim 1, as shown above. However, Isles does not teach the following limitation, but Lee does:
wherein the signaling mechanism applies an image messaging technology mechanism to a particular mail tray to link each mail piece to a respective collection bin (Lee Fig. 5 Item 505, [0041] sweep bins into mail trays and print tag to complete a mailing).
One of ordinary skill in the art would have been motivated to include the teachings of Lee in the system of Isles for the same reasons discussed above in claim 9.
Claim 13.
Isles discloses all the elements of claim 12, as shown above. However, Isles does not disclose the following limitation, but Lee does:
preventing any current mail piece from being routed to a collection bin once a particular tray associated with the at least one collection bin is full, based on the thickness determination encoded in the ICB of each mail piece (Lee Fig. 5 Item 505, [0041] sweep bins into mail trays and print tag to complete a mailing).
One of ordinary skill in the art would have been motivated to include the teachings of Lee in the system of Isles for the same reasons discussed above in claim 9.
Claim 15.
Isles discloses all the elements of claim 12, as shown above. However, Isles does not disclose the following limitation, but Lee does:
signaling, by the commingling equipment, to the operator that a predetermined number of mail pieces are within the at least one collection bin based on a determination of position of an accumulation plate associated with the at least one mail tray (Lee Fig. 5 Item 505, [0041] sweep bins into mail trays and print tag to complete a mailing).
One of ordinary skill in the art would have been motivated to include the teachings of Lee in the system of Isles for the same reasons discussed above in claim 9.
Claim(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isles in view of Richter et al. (U.S. P.G. Pub. 2011/0137610 A1), hereinafter Richter.
Claim 7.
Isles discloses all the elements of claim 1, as shown above. However, Isles does not teach the following limitation, but Richter does:
wherein the assembly mechanism passes each mail piece between a plurality of rollers to electronically determine an amount of displacement associated with each roller (Richter [0030] a number of thickness measurements are made based upon the displacement of the detecting roller).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include a roller mechanism for measuring thickness as taught by Richter in the system of Isles, since the claimed invention is merely a combination of old elements in the art of mail sorting machines, 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. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to incorporate the above features and yield predictable result of Richter’s system with the improved functionality to confirm the stored thickness information which helps prevent bins from becoming overloaded due to inaccurate thicknesses.
Claim 8.
Isles in view of Richter teaches all the elements of claim 7, as shown above. However, Isles does not teach the following limitation, but Richter does:
wherein the assembly mechanism calculates a thickness determination associated with each mail piece based on the electronically determined amount of displacement associated with each roller (Richter [0030] a number of thickness measurements are made based upon the displacement of the detecting roller).
One of ordinary skill in the art would have been motivated to include the teachings of Richter in the system of Isles for the same reasons discussed above in claim 7.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isles in view of Conard et al. (U.S. P.G. Pub. US 2005/0189409 A1), hereinafter Conrad.
Claim 11.
Isles discloses all the elements of claim 1, as shown above. However, Isles does not teach the following limitation, but Conard does:
wherein the plurality of collection bins comprises at least one hundred bins (Conard [0089] The number of sort bins can be expandable, multiple levels of bins, and double-sided bins. The number of bins can be, for example, from 1 to 256 bins, or more.).
It would have been obvious to one of ordinary skill in the art before the effective filing date to include multiple destination bins as taught by Conard in the system of Isles, since the claimed invention is merely a combination of old elements in the art of mail sorting machines, 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. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to incorporate the above features and yield predictable result of Isles’s system with the improved functionality to increase the capacity of the sorting machine.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Isles in view of Chastain et al. (U.S. P.G. Pub. US 2011/0155544 A1), hereinafter Chastain.
Claim 14.
Isles discloses all the elements of claim 12, as shown above. However, Isles does not disclose the following limitation, but Chastain does:
transmitting instructions to a mail piece elevator to route each mail piece to a particular collection bin based on the stored ICB thickness determination (Chastain [0027] an elevator arrangement may be used to move the items to the appropriate container level).
One of ordinary skill in the art would have been motivated to include the multiple bin layers of Chastain in the system of Isles in order to allow the sorter to include more sorting bins in the same square footage or sort in the same number of sorting bins with less square footage. It would have been obvious to one of ordinary skill in the art before the effective filing date to include multiple bin layers as taught by Chastain in the system of Isles, since the claimed invention is merely a combination of old elements in the art of mail sorting, 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. Specifically, one of ordinary skill in the art would have recognized that only routine engineering would be required to incorporate the above features and yield predictable result of Isles’ system with the improved functionality to allow the sorting machine to take up less square footage.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT M TUNGATE whose telephone number is (571)431-0763. The examiner can normally be reached Monday - Friday, 9:00 - 4:30 EST.
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/SCOTT M TUNGATE/Primary Examiner, Art Unit 3628