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 application filed on 06/23/2025.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on 09/22/2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
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 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)
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)
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, 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)
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 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.
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 of this title, 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.
Claims 1-14 are rejected under U.S.C. 103 as being unpatentable over Logan et al. (USPGP 2005/0259658 A1) hereinafter LOGAN, in view of Ezaki (USPGP 2004/0128524 A1), hereinafter EZAKI.
Claims 1, 9:
LOGAN as shown below discloses the following limitations:
one or more processors configured to: (see at least Figure 1 as well as associated and related text)
receive an image of an item having a virtual identifier thereon; (see at least paragraphs 0048, 0063, 0062, 0068, 0069)
determine that the virtual identifier comprises an encrypted delivery point; (see at least paragraphs 0010-0016)
item processing equipment in communication with the one or more processors, the item processing equipment configured to: (see at least Figure 1 as well as associated and related text; paragraphs 0036, 0057)
receive, from the one or more processors, the decrypted delivery point; (see at least Figure 1 as well as associated and related text; paragraphs 0036, 0057)
sort the item according to the decrypted delivery point. (see at least Figure 1 as well as associated and related text; paragraphs 0036, 0057)
LOGAN does not specifically disclose:
based on the determination that the virtual identifier comprises an encrypted delivery point, flag the image as having the encrypted delivery point;
generate decrypted delivery point information by decrypting the encrypted delivery point;
However, EZAKI, in at least column 1, lines 20-36 does. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (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 method of LOGAN with technique of EZAKI because “In recent years, there is a rapidly increasing trend of using methods of trading commodities by means of electronic mail, bulletin board systems, and online auctions on the Internet. In the course of such method of trading commodities using the Internet, a sender and a recipient often do not want to notify his or her own private information to each other. In the case of Internet shopping, a recipient may not want to disclose his or her private information to the shop.” (EZAKI: paragraph 0004). Additionally, 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.
Claim 2:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
a customer interaction database in communication with the one or more processors,
wherein the one or more processors are further configured to query the customer interaction database based on the decrypted delivery point information.
See at least Figure 1 as well as associated and related text; paragraphs 0039-0043.
Claim 3:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
wherein the one or more processors are further configured to determine, based on the query, that the decrypted delivery point information does not correspond to a recipient having an account in the customer interaction database.
See at least paragraphs 0011, 0041, 0048, 0054, 0061-0063, 0068, 0089, 0095-0099.
Claim 4:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
wherein, when the decrypted delivery point information does not correspond to a recipient having an account in the customer interaction database, the one or more processors are further configured to generate a registration item for recipient for registration for the customer interaction database.
See at least paragraphs 0011, 0041, 0048, 0054, 0061-0063, 0068, 0089, 0095-0099.
Claim 5:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
wherein the item processing equipment comprises an imaging device, and wherein the item processing equipment is further configured to:
receive the item;
image the item using the imaging device;
send, to the one or more processors, the image of the item.
See at least paragraphs 0057, 0059, 0119, and 0126.
Claims 6-8, 13, 14:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. EZAKI further discloses:
wherein the decrypted delivery point information comprises an intelligent mail barcode.
wherein the encrypted delivery point information comprises an encrypted 11-digit code.
wherein the one or more processors are configured to determine whether the virtual identifier comprises an encrypted delivery point further by identifying, in the virtual identifier, an encryption indicator.
See at least Figures 4-12 as well as associated and related text. 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. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to combine/modify the method of LOGAN with the technique of EZAKI because, “In recent years, there is a rapidly increasing trend of using methods of trading commodities by means of electronic mail, bulletin board systems, and online auctions on the Internet. In the course of such method of trading commodities using the Internet, a sender and a recipient often do not want to notify his or her own private information to each other. In the case of Internet shopping, a recipient may not want to disclose his or her private information to the shop.” (EZAKI: paragraph 0004). Moreover, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (KSR v. Teleflex, 127 S. Ct. 1727 (2007)).
Claims 10, 11:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
receiving a request for delivery point information associated with a potential recipient name.
querying, using the unique digital identifier, a memory storing associations between a delivery point information for plurality of delivery points and a plurality of digital identifiers.
See at least Figure 1 as well as associated and related text; paragraphs 0039-0043.
Claim 12:
The combination of LOGAN/EZAKI discloses the limitations as shown in the rejections above. LOGAN further discloses the following limitations:
identifying, in the memory, the unique digital identifier and the associated delivery point information.
See at least paragraphs 0007 and 0024.
Claims 15-20 are rejected under U.S.C. 103 as being unpatentable over Logan et al. (USPGP 2005/0259658 A1) hereinafter LOGAN, in view of Cornelius et al. (US 5,422,821 A), hereinafter CORNELIUS.
Claim 15:
LOGAN as shown below discloses the following limitations:
receiving, in item processing equipment, an item to be delivered; (see at least paragraphs 0010-0016)
identifying, for the item, item information, sender information, and recipient information for the recipient to which the item is intended to be delivered; (see at least paragraphs 0010-0016)
receiving an item corresponding to the predicted future event; (see at least paragraphs 0057, 0059, 0119, and 0126)
sorting, in item processing equipment, the item corresponding to the predicted future event for delivery to the recipient. (see at least paragraphs 0057, 0059, 0119, and 0126)
LOGAN does not specifically disclose the following limitations, but CORNELIUS as shown does:
identifying one or more characteristics of the item based on the item information, sender information and the recipient information; (see at least column 19, lines 10-13)
categorizing, using the identified one or more characteristics, the item into the one or more preference categories; (see at least column 181, lines 29-39)
associating the sender information, the delivery point, and the one or more preference categories of the item in a memory; (see at least column 181, lines 29-39)
predicting, based on the one or more preference categories, a future event for the recipient; (see at least column 158, lines 3-12)
In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (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 method of LOGAN with technique of CORNELIUS because “In recent years, there is a rapidly increasing trend of using methods of trading commodities by means of electronic mail, bulletin board systems, and online auctions on the Internet. In the course of such method of trading commodities using the Internet, a sender and a recipient often do not want to notify his or her own private information to each other. In the case of Internet shopping, a recipient may not want to disclose his or her private information to the shop.” (EZAKI: paragraph 0004). Additionally, 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.
Claims 16-20:
The combination of LOGAN/CORNELIUS discloses the limitations as shown in the rejections above. CORNELIUS further discloses the following limitations:
generating the item corresponding to the predicted future event.
providing, via a user interface, an indication of the predicted future event;
receiving, via the user interface, a confirmation of the predicted future event;
in response to the confirmation, generating the item corresponding to the predicted future event.
wherein providing, via the user interface, the indication of the predicted future event comprises providing the indication to a potential sender of the item.
wherein the predicted future event is a future life event of the recipient.
wherein the future life event is a birthday or anniversary.
See at least column 181, lines 07-50. In this case, each of the elements claimed are all shown by the prior art of record but not combined as claimed. However, the technical ability exists to combine the elements as claimed and the results of the combination are predictable. Therefore, when combined, the elements perform the same function as they did separately. (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 method of LOGAN with technique of CORNELIUS because “In recent years, there is a rapidly increasing trend of using methods of trading commodities by means of electronic mail, bulletin board systems, and online auctions on the Internet. In the course of such method of trading commodities using the Internet, a sender and a recipient often do not want to notify his or her own private information to each other. In the case of Internet shopping, a recipient may not want to disclose his or her private information to the shop.” (EZAKI: paragraph 0004). Additionally, 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.”
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
james.reagan@uspto.gov
571.272.6710 (Office)
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