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 .
DETAILED ACTION
This communication is a non-final action in response to application filed on 04/07/2025. Claims 1-7 are pending.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: system in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Examiner suggest deleting the word “system” so the element would be simply referred as a computer. Such computer would not invoke 112(f).
Claim Objection
Claim 3 is objected because “the at least one computer processor” appears to be a typographical error as no prior computer processor was identified.
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 1-7 are rejected under 35 U.S.C. 101 because they recite an abstract idea without significantly more.
Step 2A prong 1
As per claim 1, with the exception of computer system, bar code, and mail envelope, feeders of assembly mechanism, all the steps recite an abstract idea. In this case, these steps, as a group, shows a series of rules to be used to determine documents to be mailed (e.g., as banking statement). This is a business relationship, as well as interpersonal relationship, both of which falls into certain methods of organizing human activities. Therefore, claim 1 recites an abstract idea.
Step 2A prong 2
The computer, bar code, feeders as well as mail envelopes, whether viewed individually or as an ordered combination, are nothing more than merely generally linking the abstract idea to a particular field of use to implement the abstract idea. Therefore, they do not integrate the abstract idea into practical application.
Step 2B
As noted above in step 2A prong 2, of which the analysis still applies in step 2B, the additional elements are nothing more than generally linking the abstract idea to particular field of use, whether viewed individually or as an ordered combination. Therefore, they do not provide significantly more. Therefore claim 1 is not eligible.
Examiner suggest physically control machinery such as a assembly machine in a more explicit manner to demonstrate improvement in a technology, which can be seen as integrating the abstract idea into practical application.
Claims 2-7 merely further limit the abstract idea by providing additional steps using additional elements that are substantially similar (e.g., processor being used similarly as computer system). They would be analyzed in substantially similar manner and arrive at the same conclusion as claim 1.
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) 1-2, 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalra (US 20110125637) in view of Paul (US 20080267510).
As per claim 1, Karltra discloses a computer-implemented method, comprising:
receiving, by at least one computer system, data identifying information for a plurality of entities (Karltra, 0006, system combines payments owed to selected entities and relieves the consumer of burden of having to deposit separate investment funds each month.),
wherein the data, for each entity of the plurality of the entities, comprises:
i) at least one identifier, directly or indirectly, owned or managed by such entity (Fig. 7B, item 710, Privileged Assets, reference and ROC number), and
ii) at least one record date associated with the at least one identifier (Fig. 7B item 710, Privileged Assets, reference and ROC number);
automatically determining, by the at least one computer system, at least one document to be mailed to each entity of the plurality of entities, wherein the at least one document related to the at least one identifier (0006, system combines payments owed to selected entities and relieves the consumer of the burden of having to deposit separate investment funds each month);
automatically generating, by the at least one computer system, a delivery data for each mailing envelope to be mailed to each entity of the plurality of entities (Karltra, 0046, Billing system organize and print billing information ), wherein the delivery data comprises:
Kaltra does not but Paul teaches
unique production control bar code data, generated based on the at least one identifier (0042, Alternately, the document may be identified by a required postal authority barcode, sequence numb er or document processing system control code. See also 0039, once positive identification of a document is achieved … data accessed and used to control the document input section 12 (cutters, accumulators, folders…)); and
automatically assembling, in a machine automated mode, based on the at least one unique production control bar code data, each mailing envelope (0039, once positive identification of a document … data is accessed and used to control … cutters, accumulators, folders …), by:
selecting, in the machine automated mode, a plurality of printed documents from a plurality of feeders of at least one assembling mechanism (See Fig. 1, inserter 14 invovling feeders, see also 0039, once positive identification of a document … data is accessed and used to control … cutters, accumulators, folders …).
It would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to include Paul’s inserter that uses unique bar code to perform quality check on inserter with Karltra’s billing statement mailing for the purpose of ensuring correct package is being mailed (Paul: 0041)
As per claim 2, Karltra further discloses the computer-implemented method of claim 1, wherein each entity of the plurality of entities is one of: an individual and a financial institution (0006).
As per claim 4, Karltra further discloses the computer-implemented method of claim 1, further comprises:
periodically obtaining the at least one document from at least one electronic depository (Karltra, 0060, system creates card billing file).
As per claim 5, Karltra further discloses the computer-implemented method of claim 1, further comprises:
automatically converting the at least one document into at least one print-ready formatted file (0046, billing system organize and print billing information).
As per claim 6, Kaltra does not but Paul teaches the computer-implemented method of claim 1, further comprises:
utilizing at least one camera to read an image of the at least one unique production control bar code associated with the at least one document (Fig. 1, item 34, image camera and see 0042 for identification of document based on barcode).
The rationale to combine would persist.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalra (US 20110125637) in view of Paul (US 20080267510), further in view of Rai (US 20130128302).
As per claim 3, Karltra does not but Rai teaches the computer-implemented method of claim 1, further comprises:
automatically determining, by the at least one computer processor, a printing allocation among a plurality of printers to print documents for mailings to the plurality of entities based, at least in part, on the delivery data (Rai, Abstract, identifying a plurality of available print devices … selecting the configuration associated with the smallest processing time).
It would have been obvious for one ordinary skilled in the art before the effective filing date of present invention to include Rai’s printer allocation with Karltra’s billing statement printing and mailing for the purpose of reducing processing time.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kalra (US 20110125637) in view of Paul (US 20080267510), further in view of Baker (US 20060131378).
As per claim 7, Kaltra does not but Baker teaches the computer-implemented method of claim 1, further comprises:
Automatically generating at least one tracking log and at least one manifest document for a postal service (Baker, 0034, the combination describes a mail piece in that mailing is the basis of trace and track system. The arrangement allows these two data elements to become associated in a database for downstream tracking); and
automatically tracking the at least one document to the plurality of entities based on the at least one unique production bar code, the at least one tracking log, and the at least one manifest document (Baker, 0034, see citation above).
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 1-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2 of U.S. Patent No. 8856046, 1 and 12 of Patent No. 9183531, 1-7 of Patent No. 915957, in view of prior arts cited above.
Although the claims at issue are not identical, they are not patentably distinct from each other because each and every limitation of claim 1 of present invention can be substantially found in claim 1 of the above referenced patents. Similarly, all the dependent claims can be similarly analyzed. Any difference would be cured by the same references shown above in 103 rejection. The rationale to combine the references would persist.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE CHEN whose telephone number is (571)270-5499. The examiner can normally be reached Monday-Friday, 8:30 AM -5:00 PM Eastern.
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GEORGE CHEN
Primary Examiner
Art Unit 3628
/GEORGE CHEN/Primary Examiner, Art Unit 3628