DETAILED ACTION
Acknowledgements
The amendment filed 7/29/2026 is acknowledged.
Claims 1-13 are pending.
Claims 1-13 have been examined.
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 .
Election/Restrictions
Applicant’s election without traverse of Species A in the reply filed on 07/29/2026 is acknowledged. Claims 1-13 are directed to Species A represented by Fig. 6. Claims 14-20 are canceled as being drawn to a nonelected species.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,533,177. Although the claims at issue are not identical, they are not patentably distinct from each other. Below is the claim comparison table.
19/283,065
U.S. Patent No. 11,533,177
1. (Original) A method of providing an electronic identification, comprising
electronically weighing a package using an electronic scale;
receiving the weight of the package from the electronic scale from a network interface;
transmitting by a requestor, via a first device, a request for a barcode identification over an electronic network, the request including the weight;
receiving, via a second device, the request for the barcode identification from the requestor over the electronic network;
decoding the request to determine:
an identifier of the requestor,
an identifier of a user of the requested barcode, and
one or more parameters associated with a mail piece, the one or more parameters including the weight;
generating the requested barcode;
associating the barcode with the requestor, the user, and the one or more parameters associated with the mail piece in a data store;
generating a response message comprising the requested barcode; and
transmitting, via the second device, the response message to the requestor over the electronic network;
printing the requested barcode in response to receiving the response message using a barcode printer.
2. (Original) The method of claim 1, further comprising generating an electronic postmark based on the one or more parameters associated with the mail piece in response to the request.
3. (Original) The method of claim 2, further comprising:
associating the electronic postmark with the barcode; and
storing the association in a datastore.
1. A method of providing an electronic identification, comprising
receiving, from a requestor, a request for a barcode, the request received via a network interface over an electronic network and the request including a weight of a mail piece;
decoding the request;
determining, from the decoded request:
an identifier of the requestor,
an identifier of a user of the requested barcode, and
one or more physical parameters of the mail piece, the one or more physical parameters including the weight of the mail piece;
generating based on the decoded request, an electronic barcode;
associating the electronic barcode with the requestor, the user, and the one or more physical parameters of the mail piece in a data store;
digitally signing the electronic barcode, resulting in a digital signature comprising a timestamp;
generating, based on the digital signature, an electronic postmark, the generated electronic postmark comprising:
a binary message including a payload including the identifier of the requestor and the one or more physical parameters of the mail piece; and
a digital image encoding the payload including the identifier of the requestor and the one or more physical parameters of the mail piece;
generating a response message comprising the electronic barcode, the electronic postmark including the binary message and the digital image, and the digital signature;
transmitting the response message to the requestor via the electronic network; and
printing a barcode corresponding to the electronic barcode using a barcode printer.
4. (Original) The method of claim 1, wherein generating the requested barcode comprises generating an intelligent mail package barcode (IMPB).
2. The method of claim 1, wherein the electronic barcode comprises an intelligent mail package barcode.
5. (Original) The method of claim 1, wherein the one or more parameters associated with a mail piece includes sender address information, return address information, destination address information, the mail piece weight information, and mail piece dimension information.
3. The method of claim 1, wherein the one or more physical parameters of the mail piece also includes sender address information, return address information, destination address information, and mail piece dimension information.
6. (Original) The method of claim 1, further comprising:
generating a ten digit intelligent mail package barcode (IMPB);
determining an instance indicating a computer system comprising the server;
incrementing a serial number; and
generating the barcode to comprise the international package barcode, the serial number, the provider identifier, and the instance.
4. The method of claim 1, further comprising:
generating a ten digit intelligent mail package barcode;
determining an instance identifier indicating a computer system comprising the server;
incrementing a serial number; and
wherein generating the ten digit intelligent mail package barcode comprises associating the serial number, the provider identifier, and the instance with the electronic barcode.
7. (Original) An apparatus for providing a barcode, comprising
an electronic scale;
an electronic barcode printer;
a service providing computer, comprising:
an electronic hardware processor, and
an electronic hardware memory, operably connected to the electronic hardware processor;
a client computer, configured to receive a weight from the electronic scale over a computer interface, and generate, on behalf of a requestor, a request for a barcode over an electronic network to the service providing computer,
wherein the electronic hardware memory stores:
a service oriented architecture module, including instructions that configure the electronic hardware processor to:
receive the request for a barcode from the requestor over the electronic network, and
decode from the request to determine:
an identifier of the requestor,
an identifier of a user of the requested barcode, and
one or more parameters associated with a mail piece;
a barcode module including instructions that configure the electronic hardware processor to generate the requested barcode;
an association module including instructions that configure the electronic hardware processor to: associate the barcode with the requestor, the user, and the mail piece in a data store, wherein the service oriented architecture module includes further instructions that configure the electronic hardware processor to:
generate a response message comprising the requested barcode, and
transmit the response message to the requestor over the electronic network,
wherein the client computer is further configured print the requested barcode via the barcode printer in response to receiving the response message.
8. (Original) The apparatus of claim 7, further comprising an EPM generation module configured to generate an electronic postmark based on the one or more parameters associated with the mail piece in response to the request.
9. (Original) The apparatus of claim 8, wherein the association module is further configured to associate the electronic postmark with the barcode, and store the association in a datastore.
5. An apparatus for providing a barcode, comprising
an electronic barcode printer;
a service providing computer, comprising an electronic hardware processor, and
an electronic hardware memory, operably connected to the electronic hardware processor,
wherein the electronic hardware memory stores:
a service oriented architecture module, including instructions that configure the electronic hardware processor to:
receive, from a requestor, a request for a barcode, the request received over the electronic network and including a weight of a mail piece,
decode the request,
determine, from the decoded request:
an identifier of the requestor,
an identifier of a user of the requested barcode, and
one or more physical parameters of the mail piece, the one or more physical parameters including the weight of the mail piece;
a barcode module including instructions that configure the electronic hardware processor to generate based on the decoded request, a electronic barcode;
an association module including instructions that configure the electronic hardware processor to:
associate the electronic barcode corresponding to the requested barcode with the requestor, the user, and the one or more physical parameters of the mail piece in a data store,
digitally sign the electronic barcode to generate a digital signature comprising a timestamp;
generate, based on the digital signature, an electronic postmark, the generated electronic postmark comprising:
a binary message including a payload including the identifier of the requestor and the one or more physical parameters of the mail piece; and
a digital image encoding the payload including the identifier of the requestor and the one or more physical parameters of the mail piece;
wherein the service oriented architecture module includes further instructions that configure the electronic hardware processor to:
generate a response message comprising the electronic barcode, the electronic postmark including the binary message and the digital image, and the digital signature, and
transmit the response message to the requestor over the electronic network, and
wherein the client computer is further configured to cause the barcode printer to print a barcode corresponding to the electronic barcode.
10. (Original) The apparatus of claim 7, wherein the barcode module is further configured to generate the requested barcode by generating an intelligent mail package barcode (IMPB).
6. The apparatus of claim 5, wherein the electronic barcode comprises an intelligent mail package barcode.
11. (Original) The apparatus of claim 7, wherein the request includes sender information, and wherein the sender information includes one or more of a sender name, sender email address, and an indication of whether the sender is qualified for hazardous materials.
7. The apparatus of claim 5, wherein the request comprises sender information, and wherein the sender information includes one or more of a sender name, sender email address, and an indication of whether the sender is qualified for hazardous materials.
12. (Original) The apparatus of claim 7, wherein the one or more parameters associated with
a mail piece includes one or more of sender address information, return address information,
destination address information, mail piece weight information, and mail piece dimension
information.
8. The apparatus of claim 5, wherein the one or more physical parameters of the mail piece comprises one or more of sender address information, return address information, destination address information, and mail piece dimension information.
13. (Original) The apparatus of claim 7, wherein the barcode module is further configured to:
generate a ten digit intelligent mail package barcode (IMPB);
determine an instance indicating a computer system comprising the server;
increment a serial number; and
generate a barcode comprising the international package bar code, the serial number, the provider identifier, and the instance.
9. The apparatus of claim 5, wherein the barcode module is further configured to:
generate a ten digit intelligent mail package barcode;
determine an instance indicating a computer system comprising the server;
increment a serial number; and
wherein the intelligent mail package barcode comprises the provider identifier and the instance.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Analysis
In the instant case, claims 1-6 are directed to a method, claims 7-13 are directed to an apparatus. Therefore, these claims fall within the four statutory categories of invention.
The claim(s) recite(s) processing barcode request. Specifically, the claims recite “electronically weighing a package using an [electronic scale]; receiving the weight of the package from the [electronic scale] from a [network interface]; transmitting by a requestor, via a [first device], a request for a barcode identification over an [electronic network], the request including the weight; receiving, via a second device, the request for the barcode identification from the requestor over the [electronic network]; decoding the request to determine: an identifier of the requestor, an identifier of a user of the requested barcode, and one or more parameters associated with a mail piece, the one or more parameters including the weight; generating the requested barcode; associating the barcode with the requestor, the user, and the one or more parameters associated with the mail piece in a data store; generating a response message comprising the requested barcode; and transmitting, via the [second device], the response message to the requestor over the [electronic network]; printing the requested barcode in response to receiving the response message using a [barcode printer].”, which is “commercial or legal interactions” within the “certain methods of organizing human activity” grouping of abstract ideas in prong one of step 2A of the Alice/Mayo test (See MPEP 2106) because the claims involve a series of steps for processing barcode request. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106), the additional element(s) of the claim(s) such as the use of electronic scale, network interface, first device, electronic network, second device, barcode printer, service providing computer and client computer merely use(s) a computer as a tool to perform an abstract idea. The processors and memories are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of processing barcode request) such that it amounts no more than mere instructions to apply the exception using a generic computer components. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using electronic scale, network interface, first device, electronic network, second device, barcode printer, service providing computer and client computer to perform processing barcode generation request steps amounts to no more than mere instructions to apply the exception using a generic computer components. Mere instructions to apply an exception using a generic computer components cannot provide an inventive concept. The claim is not patent eligible.
Dependent claims 2-3 and 8-9 describe electronic postmark. Dependent claims 4, 6,10 and 13 describe barcode generation. Dependent claims 5 and 12 describe mail piece parameters. Dependent claim 11 describes the request. These claims further recite the abstract idea of certain methods of organizing human activity. This judicial exception is not integrated into a practical application because the additional element(s) of the claim(s) such as the use of electronic scale, network interface, first device, electronic network, second device, barcode printer, service providing computer and client computer merely use(s) a computer as a tool to perform an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims are not patent eligible.
Viewed as a whole, the combination of elements recited in the claims simply recite the concept of processing barcode request. The 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.
The use of an electronic scale, network interface, first device, electronic network, second device, barcode printer, service providing computer and client computer as tools to implement the abstract idea does not render the claim patent eligible because it does not provide meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment and requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea.
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 3 and 9 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 pre-AIA the applicant regards as the invention.
Unclear
The dependent claim 3 recites “...storing the association in a datastore” However, the independent claim 1 recites “...associating the barcode with....in a data store;”. This renders the claim 3 indefinite because it is unclear to one of ordinary skill in the art that “data store” in claim 1 and “datastore” in claim 3 are same or different.
Similarly, the dependent claim 9 recites “...store the association in a datastore” However, the independent claim 7 recites “...an association module...: associate the barcode with....in a data store;”. This renders the claim 9 indefinite because it is unclear to one of ordinary skill in the art that “data store” in claim 1 and “datastore” in claim 3 are same or different.
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.
Claims 1-3, 5, 7-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20120232970A1 (“Kara”) in view of US Grant Publication US 7797543B1 (“Campbell et al.”).
Regarding claims 1 and 7, Kara discloses:
electronically weighing a package using an electronic scale; (Fig. 2)
receiving the weight of the package from the electronic scale from a network interface; (Fig. 2; ¶0025 and ¶0070)
transmitting by a requestor, via a first device, a request for a barcode identification over an electronic network, the request including the weight; (¶0004, ¶0039 and ¶0070)
receiving, via a second device, the request for the barcode identification from the requestor over the electronic network; (¶0004 and ¶0070)
decoding the request to determine:
an identifier of the requestor, (¶0077)
an identifier of a user of the requested barcode, (¶0077) and
one or more parameters associated with a mail piece, the one or more parameters including the weight; (¶0034 and ¶0077)
generating the requested barcode; (¶0039 and ¶0077)
generating a response message comprising the requested barcode; and (¶0031, ¶¶0039-40 and ¶0042)
transmitting, via the second device, the response message to the requestor over the electronic network; (¶0031 and ¶0040])
printing the requested barcode in response to receiving the response message using a barcode printer. (¶0040 and ¶0075)
Kara does not explicitly disclose:
associating the barcode with the requestor, the user, and the one or more parameters associated with the mail piece in a data store;
However, Campbell et al. discloses:
associating the barcode with the requestor, the user, and the one or more parameters associated with the mail piece in a data store; (col. 4, lines 21-31; col. 5, lines 21-65, col. 10, lines 27-42; Fig. 3A)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Intelligent Postage Stamp Printer of Kara by including associating the barcode with the requestor, the user, and the one or more parameters associated with the mail piece in a data store in accordance with the teaching of Campbell et al.. This modification enables the combined system to verify and audit the transactions and detect fraudulent transactions.
Regarding claims 2 and 8, Kara in view of Campbell et al. discloses all limitations as described above. Campbell et al. further discloses:
generating an electronic postmark based on the one or more parameters associated with the mail piece in response to the request. (col. 3, lines 16-44).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Intelligent Postage Stamp Printer of Kara by including generating an electronic postmark based on parameters associated with the mail piece in accordance with the teaching of Campbell et al.. This modification ensures the postmark matches with a specific mail transaction. It helps to prevent fraudulent transactions.
Regarding claims 3 and 9, Kara in view of Campbell et al. discloses all limitations as described above. Campbell et al. further discloses:
associating the electronic postmark with the barcode; and (col. 4, lines 21-31; col. 5, lines 21-65, col. 10, lines 27-42; Fig. 3A)
storing the association in a datastore. (col. 4, lines 21-31; col. 5, lines 21-65, col. 10, lines 27-42; Fig. 3A)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Intelligent Postage Stamp Printer of Kara by including associating the electronic postmark with the barcode and storing the association in a datastore in accordance with the teaching of Campbell et al.. This modification enables the combined system to maintain transactions in a database for future audit.
Regarding claims 5 and 12, Kara in view of Campbell et al. discloses all limitations as described above. Kara further discloses:
wherein the one or more parameters associated with a mail piece includes sender address information, return address information, destination address information, the mail piece weight information, and mail piece dimension information. (¶0074 and ¶0077)
Regarding claim 11, Kara in view of Campbell et al. discloses all limitations as described above. Kara further discloses:
wherein the request includes sender information, and wherein the sender information includes one or more of a sender name, sender email address, and an indication of whether the sender is qualified for hazardous materials. (¶0074 and ¶0077)
Claims 4 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20120232970A1 (“Kara”) in view of US Grant Publication US 7797543B1 (“Campbell et al.”), and in further view of US Application Publication US20130198060A1 (“Whitehouse”).
Regarding claims 4 and 10, Kara in view of Campbell et al. discloses all limitations as described above. Kara and Campbell et al. do not explicitly disclose:
wherein generating the requested barcode comprises generating an intelligent mail package barcode (IMPB).
However, Whitehouse disclose:
wherein generating the requested barcode comprises generating an intelligent mail package barcode (IMPB). (¶0040)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Kara and Campbell et al. by including generating an intelligent mail package barcode in accordance with the teaching of Whitehouse. This modification enables the combined system in compliance with the USPS barcode standard.
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over US Application Publication US20120232970A1 (“Kara”) in view of US Grant Publication US 7797543B1 (“Campbell et al.”), and in further view of USPS (Barcode, Package, Intelligent Mail® Specification, Dec. 29, 2011, Rev E) (“USPS IMPB Specification”).
Regarding claims 6 and 13, Kara in view of Campbell et al. discloses all limitations as described above. Kara and Campbell et al. do not explicitly disclose:
generating a ten digit intelligent mail package barcode (IMPB);
determining an instance indicating a computer system comprising the server;
incrementing a serial number; and
generating the barcode to comprise the international package barcode, the serial number, the provider identifier, and the instance.
However, USPS IMPB Specification discloses:
generating a ten digit intelligent mail package barcode (IMPB); (page 1, Section 1.4; Section 2.5.1.7)
determining an instance indicating a computer system comprising the server; (page 4, Section 2.5.1.1)
incrementing a serial number; and (page 4, Section 2.5.1.9)
generating the barcode to comprise the international package barcode, the serial number, the provider identifier, and the instance. (pages 4-5, Section 2.5)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the combined system of Kara and Campbell et al. by including generating barcode in compliant with USPS standard in accordance with the teaching of USPS IMPB Specification. This modification enables the combined system in compliance with the USPS barcode standard.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US7831518B2 (“Montgomery et al.”) discloses a method and system for using an indexing identifier (such as, e.g., a tracking ID or the combination of a postage vendor ID, user account, and piece count) to decrease the size of the postage indicium transmitted to an end user computer, or eliminate transmission of the postage indicium altogether, is provided. When the postage indicium for the end user computer is generated, it is stored, and the indexing identifier, rather than the postage indicium, is transmitted to the end user computer. The indexing identifier is applied to a mail piece, which is then scanned by the postal authority. The postal authority can obtain the stored postage indicium by reference to the indexing identifier. In this manner, the postal authority has access to the postage indicium without having to apply it to the mail piece. The indexing identifiers can optionally be used to index sender identification information for verifying that the sender of a mail piece is a trusted individual or entity.
US5699257A (“Emmett et al.”) discloses a postage meter prints postage indicia onto envelopes using extendible segments. The postage meter includes a user interface for entering input information, a transfer means having extendible segments disposed thereon, the segments being arranged to form the postage indicia when extended, and an ink roller, which contacts extended ones of the segments so as to transfer ink from the ink roller to the extended ones of the segments. Also included in the postage meter are a sensor, which senses an envelope in the postage meter, and which outputs a signal which indicates that an envelope is present in the postage meter, and a controller. The controller (1) converts the input information into the postage indicia, (2) extends ones of the segments based on the postage indicia, and (3) activates the transfer means in response to the signal output by the sensor so that (i) extended segments receive ink by contacting the ink roller, and (ii) the extended segments transfer the ink received from the ink roller to the envelope.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YINGYING ZHOU whose telephone number is (571)272-5308. The examiner can normally be reached Mon - Fri 9:00am - 5:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John W Hayes can be reached on 571-272-6708. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YINGYING ZHOU/Primary Examiner, Art Unit 3697
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