DETAILED ACTION
This Office action is in reply to application no. 19/081,813, filed 17 March 2025. Claims 1-6 are pending and are considered below.
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 .
Claim Rejections - 35 USC § 112
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 1-6 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. The claims are directed to a system, the purpose of which is "to track a mail piece" and provide information related thereto; the mail piece is not within the scope of the claimed system. However, claim 1 (and certain dependent claims) purport to limit the mail piece. As the mail piece is not within the scope of the claim, it is unclear how limitations ascribed to it are supposed to be in any way relevant. Claim 3 is further indefinite as there is insufficient antecedent basis for "said cellular network".
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to a "system" which has no physical components but just data and a collection of labelled, nonfunctional modules. Nothing in the claims, specification or drawings require any hardware to be associated with these modules. Therefore under the broadest reasonable interpretation, the claims include embodiments directed to software per se. Software per se does not lie within any statutory category because it is a list of instructions; a list of instructions is neither a process, machine, composition of matter nor a manufacture.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) tracking mail and providing information about the tracking. This recites a fundamental business practice and human mental work. The Post Office (when it was called that) was able to track mail, e.g. registered mail, by using clerks and paper records, many decades before there was any such thing as a computer.
This judicial exception is not integrated into a practical application because aside from the implicit inclusion of a generic computer, discussed below, nothing is done beyond what was set forth above, which does not go beyond generally linking the abstract idea to the technological environment of networked computers. See MPEP § 2106.05(h).
As the claims only, and barely, manipulate information about items sent through the mail, they do not improve the "functioning of a computer" or of "any other technology or technical field". See MPEP § 2106.05(a). They do not apply the abstract idea "with, or by use of a particular machine", MPEP § 2106.05(b), as the below-cited Guidance is clear that a generic computer is not the particular machine envisioned.
They do not effect a "transformation or reduction of a particular article to a different state or thing", MPEP § 2106.05(c). First, such information, being intangible, is not a particular article at all. Second, the claimed manipulation is neither transformative nor reductive; as the courts have pointed out, in the end, data are still data.
They do not apply the abstract idea "in some other meaningful way beyond generally linking [it] to a particular technological environment", MPEP § 2106.05(e), as the lack of technical and algorithmic detail in the claims is so as not to go beyond such a general linkage.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional claim limitations, considered individually and as an ordered combination, are insufficient to elevate an otherwise-ineligible claim. The claim includes a "computerized system", and the specification does not meaningfully limit this, such that a generic computer will suffice.
It only performs generic computer functions of sharing data with other components within itself and possibly external systems or persons. Generic computers performing generic computer functions, without an inventive concept, do not amount to significantly more than the abstract idea.
The type of information being manipulated does not impose meaningful limitations or render the idea less abstract. The claim elements when considered as an ordered combination - at most, a generic computer performing a chronological sequence of abstract steps - do nothing more than when they are analyzed individually.
The dependent claims further do not amount to significantly more than the abstract idea: claims 2, 4 and 5 simply recite sharing data, claim 3 simply recites determining a location, and claim 6 simply recites conditionally communicating based on a comparison.
For further guidance please see MPEP § 2106.03 – 2106.07(c) (formerly referred to as the “2019 Revised Patent Subject Matter Eligibility Guidance”, 84 Fed. Reg. 50, 55 (7 January 2019)).
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, 2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (U.S. Patent No. 8,527,284) in view of Bollinger et al. (U.S. Publication No. 2019/0303862).
In-line citations are to Smith. Claims are examined as best understood.
With regard to Claim 1:
Smith teaches: A direct mail marketing campaign system to track a mail piece and provide email marketing to a recipient comprising: [Col. 3, lines 43-44; "a computer connected to a computer network such as, but not limited to, the worldwide web"]
a. said mail piece having a specific delivery address [Col. 4, line 36; a "delivery address" is provided] and a smart label attached to said mail piece and said specific delivery address naming said recipient; [Col. 7, lines 6-7; "a machine readable code on a pre-coded delivery label"]
b. a digital mail piece representing said mail piece; [Claim 1; a "digital copy of the mail piece" is provided] and c. a computerized system and said computerized system comprising: [Col. 3, lines 43-44 as cited above]
i. a mail tracking module to track said mail piece;
ii. an informed delivery module;
iii. A lead match module;
iv. A call tracking module;
v. a social match module;
vi. a social media follow-up module;
vii. an online follow-up module;
viii. an email marketing module;
ix. an enhanced mail tracking module;
x. a hello lead module; and
d. said smart label attached to said mail piece has a digital data identification module... [Col. 7, lines 6-7 as cited above]
e. said email marketing module is in communication with said mail tracking module, said informed delivery module, said lead match module, said call tracking module, said social match module, said social media follow-up module, said online follow-up module, said enhanced mail tracking module; and
f. said email marketing module retrieves an email address of said recipient using said mail tracking module and sends said recipient an email with said digital mail piece. [Col. 8, lines 53-54; the physical address and e-mail address are obtained from a single database; claim 1; an e-mail linking to the digital copy is sent]
Smith does not explicitly teach that a shipping label includes a battery, but in addition to being of no patentable significance as explained below, it is known in the art. Bollinger teaches a digital smart shipping label [abstract] in which an "electronic shipping label', which "may be a thin film shipping label. powered by a power source" and which may use "battery power" as its power source. [0048] It is determined the container "has been delivered to the customer location". [0016] Bollinger and Smith are analogous art as each is directed to electronic means for managing shipments.
It would have been obvious to one of ordinary skill in the art just prior to the filing of the claimed invention to combine the teaching of Bollinger with that of Smith in order to reduce cost and risk of shipping, as taught by Bollinger; [0003] further, it is simply a substitution of one known part for another with predictable results, simply using Bollinger's label in place of that of Smith; the substitution produces no new and unexpected result.
Referring to a computer as a "direct mail marketing campaign system" consists entirely of mere labeling and so is considered but given no patentable weight. The phrase "to track a mail piece and provide email marketing to a recipient" consists entirely of intended-use language which is considered but given no patentable weight. As the mail piece is merely an object which is tracked and not positively claimed as being within the scope of the system, limitations ascribed to it are of no patentable significance as being outside the scope of the claimed system.
Referring to software components by name without providing any structure or functionality, as is done by steps (c)(i) through (c)(x) of the claim, is, again, considered mere labeling and considered but given no patentable weight. The smart label is not positively claimed as being within the scope of the claimed systems so limitations ascribed to it are considered but given no patentable weight. That the various software components of a system are in communication with each other, referring to step (e), is inherent in modern data processing systems and so does not read over the art. References, where provided, are for the purpose of compact prosecution.
With regard to Claim 2:
The direct mail marketing campaign system of claim 1 wherein said digital data identification module is in communication with a cellular network and said mail tracking module having a digital trackable direct mail module is in communication with said cellular network and said digital trackable direct mail module communicates with said mail tracking module. [Bollinger, 0035; "cellular" can be used for any of the communication; it would have been obvious to one then of ordinary skill in the art to combine this feature of Bollinger to the teaching of Smith as it is merely a substitution of one known part for another with predictable results]
With regard to Claim 4:
The direct mail marketing campaign system of claim 1 wherein said digital data identification module using said cellular network communicates said location of said smart label attached to said mail piece to said digital trackable direct mail module. [Bollinger, 0012, the location is tracked; 0013; this information is made available to a system which can create a new shipping order; it would have been obvious to one then of ordinary skill in the art to combine this feature of Bollinger to the teaching of Smith as it is merely a substitution of one known datum for another with predictable results]
With regard to Claim 5:
The direct mail marketing campaign system of claim 1 wherein said digital trackable direct mail module communicates said location of said smart label to said mail tracking module. [id.; this is just a relabeling of whatever software or computer receives the information, compared with claim 4]
With regard to Claim 6:
The direct mail marketing campaign system of claim 1 wherein said location of said smart label is compared to said specific delivery address and if said location of said smart label is the same as said specific delivery address then said email marketing module retrieves an email address of said recipient at said specific delivery address using said mail tracking module and sends said recipient an email with said digital mail piece. [Bollinger, 0016 as cited above in regard to claim 1; Smith, Col. 12, lines 11-13; "sending an email with a link or providing access to the linked information" where the linked information is, lines 8-9 the "digital copy of the mail piece"; it would have been obvious to one then of ordinary skill in the art to send such information at the time specified by Bollinger in place of, or in addition to, the time of Smith, as it is simply a substitution of one known datum for another with predictable results]
It is not positively recited that the claimed system does any comparing; the reference is provided for the purpose of compact prosecution.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. in view of Bollinger et al. further in view of Conlon (U.S. Publication No. 2019/0066042).
With regard to Claim 3:
The direct mail marketing campaign system of claim 1 wherein said digital data identification module using said cellular network triangulates the location of said smart label attached to said mail piece.
Smith and Bollinger teach the system of claim 1 including tracking locations of mail pieces, but do not explicitly teach triangulating using cellular technology, but it is known in the art. Conlon teaches a shipment tracking system [title] in which "cell tower triangulation" is used for "location detection" of a "shipment". [0054] Conlon and Smith are analogous art as each is directed to electronic means for managing data relating to physically-sent items.
It would have been obvious to one of ordinary skill in the art to combine the teaching of Conlon with that of Smith and Bollinger in order to ensure security of shipments, as taught by Conlon; [title] further, it is simply a combination of known parts with predictable results, simply performing Conlon's step at any time during Smith's process. Each part works independently of the other, and each works in combination identically to how it works when not combined, with no new and unexpected result inherent or disclosed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT C ANDERSON whose telephone number is (571)270-7442. The examiner can normally be reached M-F 9:00 to 5:30.
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/SCOTT C ANDERSON/Primary Examiner, Art Unit 3694
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