DETAILED ACTION
Acknowledgments
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is in reply to the amendment and response filed on 07/30/2026.
Claims 1, 5, and 9 have been amended.
Claims 1-20 are currently pending and have been examined.
Response to Arguments
Arguments and Assertions by the Applicant
Applicant’s arguments received 07/30/2026 with respect to the prior art rejections have been considered but are moot in view of the new ground(s) of rejection.
Applicant’s amendments, with respect to the rejection of claims 1-20 under 35 U.S.C. 101 have been fully considered and are not persuasive. The rejections of claims 1-20 under 35 U.S.C. 101 have been updated to conform to current guidelines and maintained accordingly.
The relevant question is whether the claims do more than collect, store, display, and compare data to optimize a delivery objective on a generic computer. This does not appear to be the case.
Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to obtain data, use data to identify other data, and filtering data are some of the most basic functions of a computer. Moreover, the technical solution described in this invention does not alter hardware structure or its routine, does not transform the character of the information being processed, does not identify a novel source or type of data, does not advance the functionality of a computer as a tool, and does not incorporate specific rules enabling the computer to accomplish innovative utilities. Therefore the claims are not significantly more than recitations of a judicial exception. In summary, each step does no more than require a common computer to perform universal computer functions. Therefore, the claims are directed to using a computer as a tool to follow instructions.
Considered as an ordered combination, the computer components of petitioner's method, system, and/or computer readable medium add nothing that is not already present when the steps reconsidered separately. Viewed as a whole, the method, system, and/or computer readable medium claims simply recite the concept of analyzing storing data in the form of digital data, comparing/categorizing data, and displaying the data.
The method, system, and/or computer readable medium claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of organizing and analyzing data using some unspecified, generic computer. Consequently, that is not enough to transform an abstract idea into a patent-eligible invention.
As in TLI, Applicant’s claims are “not directed to a specific improvement to computer functionality. Rather, they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combing the two.” See TLI Communications LLC v. A.V. Automotive, LLC, (Fed. Cir. 2016). “The specification does not describe a new telephone, a new server, or a new physical combination of the two. The specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms.” Id. "Instead, the claims, as noted, are simply directed to the abstract idea of classifying and storing digital images in an organized manner." Id.
The claims in this case fall into a familiar class of claims “directed to” a patent-ineligible concept. The focus of the asserted claims, as illustrated by the claims, is on collecting information, analyzing it, displaying certain results of the collection and analysis and sending instruction to implement result. The outer limits of “abstract idea” need not be defined, nor at this stage exclude the possibility that any particular inventive means are to be found somewhere in the claims, to conclude that these claims focus on an abstract idea - and hence require stage-two analysis under §101. Information as such is an intangible. See Microsoft Corp. v. AT & T Corp., 550 U.S. 437, 451 n.12 (2007); Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Accordingly, the courts have treated, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas. See, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011).
In a similar vein, the courts have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category. See, e.g., TLI Communications, 823 F.3d at 613; Digitech, 758 F.3d at 1351; Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011); SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010); see also Mayo, 132 S. Ct. at 1301; Parker v. Flook, 437 U.S. 584, 589–90 (1978); Gottschalk v. Benson, 409 U.S. 63, 67 (1972). In addition, merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
In this case, the claims are clearly focused on the combination of those abstract-idea processes. This invention claims a process of gathering and analyzing information of a specified content, processing that data, then displaying the results, without any particular or asserted inventive technology for performing those functions. They are therefore directed to an abstract idea.
For stage 2 of the analysis, merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from §101 undergirds the information-based category of abstract ideas.
Referring to Electric Power Group, LLC v. Alstrom S.A., the claims in this case do not even require a new source or type of information, or new techniques for analyzing it. See, e.g., US Patent 8,401,710 B2 (Budhraja et. al.), col. 8, lines 51–62 (referring to existing phasor data sources); J.A. 6969–71 (describing workings and history of phasor data use); Electric Power Group Br. at 21–22; Reply Br. at 5 (new algorithms not claimed). As a result, the claims do not require an inventive set of components or methods, such as measurement devices or techniques that would generate new data. They do not invoke any novel inventive programming. Merely requiring the selection and manipulation of information—to provide a “humanly comprehensible” amount of information useful for users, Reply Br. at 6; Electric Power Group Br. at 14–15—by itself does not transform the otherwise-abstract processes of information collection and analysis.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patent eligible subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step 1:
The claims recite a process, system, apparatus, article of manufacture, and/or a nontransitory storage medium with instructions, each of which are proper statutory categories.
Step 2A (prong 1):
Claim 1 (representative of claims 9 and 15):
The claim limitations are grouped as shown immediately following:
receive an image of an item having a virtual identifier thereon; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
determine, from the received image, that the virtual identifier comprises an encrypted delivery point; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
based on the determination that the virtual identifier comprises an encrypted delivery point, flag the image as having the encrypted delivery point; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
update, in a memory, an association between the virtual identifier and the flag indicating the image as having the encrypted delivery point; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
generate decrypted delivery point information by decrypting the encrypted delivery point; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
first item processing equipment in communication with the one or more processors, the item processing equipment configured to: (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules
or instructions)
receive the item having the virtual identifier thereon; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
receive, from the one or more processors, the decrypted delivery point; (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
in response to receiving the decrypted delivery point, automatically sort the item according to the decrypted delivery point. (Certain Methods Of Organizing Human Activity - business relations or managing personal behavior or relationships or interactions between people including following rules or instructions)
Additional dependent claims 6 and 13 appear remedy the deficiency.
Step 2A (prong 2):
Claim 1 (representative of claims 9 and 15):
…a system
…one or more processors
…item processing equipment
These remaining claim limitations are delineated as shown immediately preceding. The abstract idea is not integrated into a practical application. There are no improvements to the functioning of a computer, other technology or technical field, a particular machine is not cited, nothing is transformed to a different state or thing, the abstract idea is not more than a drafting effort designed to monopolize the abstract idea. The claim merely uses a computer as a tool to perform the abstract idea, which is generally linked to a particular field of use, in this case, marketing and advertising. Thus, these limitations are recited at a high-level of generality (i.e., as a generic processor and memory performing a generic computer function of processing and storing data) such that it amounts no more than mere instructions to apply the exception using a generic computer component – MPEP 2106.05(f). Further, receiving data, evaluating data and distributing data are data gathering and data outputting, which has no effect on technology and does no more than generally link the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Step 2B:
The claim limitations do not provide an Inventive Concept. The claim limitations do not recite additional elements that amount to significantly more that the abstract idea because the additional elements of the system comprising a computer processor, computer readable storage medium with instructions, and a memory configured to store information, each recited at a high level of generality in a computer network which only perform the universal computer functions of accessing, receiving, storing, and processing data, transmitting and presenting information. Taking the elements both individually and as an ordered combination, the function performed by the computer at each step of the process is purely orthodox. Using a computer to obtain and display data are some of the most basic functions of a computer. As shown, the individual limitations claimed are some of the most rudimentary functions of a computer. The technical solution described in this invention does not alter hardware structure or its routine, does not transform the character of the information being processed, does not identify a novel source or type of data, does not advance the functionality of a computer as a tool, and does not incorporate specific rules enabling the computer to accomplish innovative utilities. In summary, the individual step and/or component does no more than require a general computer to perform standard computer functions. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of a computer devices amounts to no more than mere instructions to apply the exception using a generic computer component - requiring the use of software to tailor information and provide it to the user on a generic computer, Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370-71, 115 USPQ2d 1636, 1642 (Fed. Cir. 2015).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,113,658 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,113,658 B2, hereinafter the ‘658 patent. Although the claims at issue are not identical, they are not patentably distinct from each other. Each of the ‘658 patent as well as this presently claimed invention are directed towards shipping and delivering of items with multiple possible distribution destinations that are maintained by a database.
However, the ‘658 patent claims:
wherein the encrypted delivery point information comprises one of an encrypted intelligent mail barcode or an encrypted 11-digit delivery code.
It would have been obvious to a person of ordinary skill in the art to modify the claims this instant application by removing the limitations directed to an encrypted 11 digit delivery code resulting generally in the claims of the present application since the claims of the present application and the claims recited in the ‘148 patent actually perform a similar function. It is well settled that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA 1963). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969). Omission of a reference element whose function is not needed would be obvious to one of ordinary skill in the art.
Additionally, in this case, the limitation as claimed by the invention is merely an improvement over a base device, product, or method as taught by the references. The specifications also teach a comparable device improved in the same way. The technical ability existed to improve the base device in the same way and the result of the improvement is predictable. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Consequently, it would have been obvious to one of ordinary skill in the art at the effective filing date to combine/modify this instant invention with the mailing technique of the encrypted 11 digit delivery code method of the ‘658 patent because there is a recognized problem or need in the art including market pressure, design need, etc., and there are a finite number of identified predictable solutions. Accordingly, those in the art could have pursued known solutions with reasonable expectation of success. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)). Fundamentally, in the competitive business climate, there is a profit-driven motive to maximize the profitability of goods and services that are provided or marketed to customers. Enterprises typically use business planning to make decisions in order to maximize profits.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Non-Patent Literature:
ENDICIA. “Understanding FIM (Facing Identification Marks) on Envelopes.” (December 07, 2004). Retrieved online 05/07/2021. https://www.endicia.com/tools-resources/harrys-hints/facing-identification-marks
Bruce Schneier. “NSA surveillance: A guide to staying secure.” (September 06, 2013). Retrieved online 05/07/2021. https://www.theguardian.com/world/2013/sep/05/nsa-how-to-remain-secure-surveillance
Foreign Art:
KATO, KIROKU et al. (WO 9906161 A1). “IMPROVED PACKAGE AND MAIL DELIVERY SYSTEM.”
YAMAUCHI, MASAMI. (JP 2012/012177 A). “PACKAGE DELIVERY SYSTEM.”
AYUKAWA, KAZUHIRO. (JP 2002/230373 A). “METHOD AND DEVICE FOR ORDER RECEPTION OF ORDER RECEPTION SYSTEM.”
Applicant’s amendment filed on 07/30/2026 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 extension fee 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 date of this final action.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to James A. Reagan (james.reagan@uspto.gov) whose telephone number is 571.272.6710. The Examiner can normally be reached Monday through Friday from 9 AM to 5 PM. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, John Hayes, can be reached at 571.272.6708.
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/JAMES A REAGAN/Primary Examiner, Art Unit 3697
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