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 .
Status of Claims
This action is in reply to the application filed on October 20, 2025.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on October 20, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,469,093 (application serial number 18/444538) in view of Tweyman et al. (US 2016/0110827 A1, hereinafter “Tweyman”). The only substantive difference in the claims is that the 12,469,093 patent recites “cause the retrieval code to be embedded or encoded in a URL, a QR code, and/or other machine-readable code” and the instant application recites “cause the retrieval code to be embedded or encoded in a URL encoded as a QR code or other machine-readable code.” Examiner first notes that under a broadest reasonable interpretation of the claims, the claims are functionally identical because either claim could be infringed upon by any “other machine readable code” (i.e., because the claim limitation is dissociative). Nevertheless, for the purpose of compact prosecution, even if the claim required at least one of a URL or QR code, in which case the instant application would require that the QR code embed or encode the URL itself, the feature of embedding a URL in a QR code in the field of legal process serving is taught by Tweyman (see, e.g., at least Figure 7 teaching an exemplary GUI of a delivery notice page for the electronic documents 732 to be served 734a for delivery with a QR code 750 that “contains a link to an online copy;” see further ¶s 115-119, particularly 119, further discussing the QR code/receipt verification link 750 noting that “the receipt verification link 750 may be provided as a URL that is encoded as a Quick Response (QR) code;” see additionally ¶s 10-11 disclosing substantially the same). Tweyman notes that providing a QR code as a retrieval code for the recipient to retrieve the legal document because such a link “can ensure that the authentic exchange record 700 is being accessed” (see Tweyman ¶ 118).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-10, 12, 15, 16, and 18-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosenthal et al. (US 7,162,428, hereinafter “Rosenthal”) in view of Tweyman et al. (US 2016/0110827 A1, hereinafter “Tweyman”).
Claim 1. Rosenthal teaches: A secure document portal system that provides a recipient remote access to electronic documents, the system comprising one or more computing devices including one or more processors and memories containing program code for execution by the one or more processors, the one or more computing devices configured to (see, e.g., Figure 2 teaching a processor/controller 30 connected via the internet to several gateways that collectively perform the steps of the invention):
receive personally identifiable information about the recipient, and metadata about one or more electronic documents (see, e.g., Figure 8 teaching providing the name and address as well as other data identifying the recipient in a form about the actual legal documents that will be served including metadata such as “file number;” see also, e.g., column 7 lines 7-16 teaching receiving names of the parties involved and the address of the service of process; see further, e.g., column 11 lines 12-22 and lines 55-59 teaching papers that include a barcode, i.e., metadata, about the documents);
generate a retrieval code, wherein the retrieval code is specific to the recipient and/or specific to the electronic documents (see, e.g., column 6 lines 1-21 teaching that users can be provided with unique identifying codes to access the service of process documents; see also column 5 lines 46-58 teaching requiring a password or other code to access the system as well as a “unique tracker number” that “is assigned to the transaction;” see additionally column 11 lines 1-22 teaching a bar code being attached to the package of the papers); and
cause the retrieval code to be embedded or encoded in a URL encoded as a QR code or other machine-readable code and displayed on a delivery notice page or device separate from the one or more electronic documents for delivery without proof of service to the recipient (see column 11 lines 1-22 and 44-59 teaching a bar code being attached to the package of the papers, though Examiner notes that this is further addressed below);
at a later time:
receive, from a user, input including the retrieval code (this is further addressed below);
verify, in response to receiving the input, that the user is the recipient (see column 8 lines 35-53 teaching using known security features such as finger/voice/facial recognition technologies or digital or electronic signatures, though Examiner notes that this is further addressed below);
provide the recipient, where email is not valid service, pre-delivery remote access to view the electronic documents, wherein the metadata allows the one or more computing devices to retrieve the electronic documents to provide the recipient the pre-delivery remote access to view the electronic documents (see, e.g., column 9 lines 41-48 teaching electronic delivery or email in jurisdictions where permitted; though Examiner notes that this is further addressed below).
Rosenthal fails to teach, however, analogous reference Tweyman teaches:
cause the retrieval code to be embedded or encoded in a URL encoded as a QR code or other machine-readable code and displayed on a delivery notice page or a device separate from the one or more electronic documents for delivery without proof of service to the recipient (see, e.g., at least Figure 7 teaching an exemplary GUI of a delivery notice page for the electronic documents 732 to be served 734a for delivery with a QR code 750 that “contains a link to an online copy;” see further ¶s 115-119, particularly 119, further discussing the QR code/receipt verification link 750 noting that “the receipt verification link 750 may be provided as a URL that is encoded as a Quick Response (QR) code;” see additionally ¶s 10-11 disclosing substantially the same);
at a later time:
receive, from a user, input including the retrieval code (see Figure 7 and ¶s 115-120 teaching that the recipient can select the retrieval code 750 and/or link 752 to access the documents); …
provide the recipient, where email is not valid service, pre-delivery remote access to view the electronic documents, wherein the metadata allows the one or more computing devices to retrieve the electronic documents to provide the recipient the pre-delivery remote access to view the electronic documents (see, e.g., at least Figure 7 teaching an exemplary GUI of a delivery notice page for the electronic documents 732 to be served 734a for delivery with a QR code 750 that “contains a link to an online copy” and thus allow pre-hard copy delivery and remote access to view the documents, noting that the QR code is metadata because it is data regarding the electronic document; see further ¶s 115-119, particularly 119, further discussing the QR code/receipt verification link 750 noting that “the receipt verification link 750 may be provided as a URL that is encoded as a Quick Response (QR) code”).
As noted above, Rosenthal fails to expressly teach that the retrieval code is to be embedded or encoded in a URL encoded as a QR code or other machine-readable code and displayed on a delivery notice page or a device separate from the one or more electronic documents for delivery, Examiner notes that this is taught in analogous prior art by Tweyman as noted above. Tweyman is analogous to the instant application and Rosenthal because it relates to systems and methods for exchanging electronic documents for legal proceedings (see Tweyman ¶ 1), including when documents need to be served on other parties (see Tweyman ¶s 37, 39, and 73).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of providing a URL embedded in a QR code as a retrieval code for one to retrieve the legal document (as disclosed by Tweyman) to the known method and system of automating the service of process on a party to a legal dispute (as disclosed by Rosenthal). One of ordinary skill in the art would have been motivated to apply the known technique of providing a QR code as a retrieval code for the recipient to retrieve the legal document because such a link “can ensure that the authentic exchange record 700 is being accessed” (see Tweyman ¶ 118).
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of providing a QR code as a retrieval code for one to retrieve the legal document (as disclosed by Tweyman) to the known method and system of automating the service of process on a party to a legal dispute (as disclosed by Rosenthal), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of providing a QR code as a retrieval code for one to retrieve the legal document to the known method and system of automating the service of process on a party to a legal dispute, because predictably an electronic authentication method can work with a method that sends data electronically). See also MPEP § 2143(I)(D).
Claim 2. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein the one or more computing devices are further configured to store the one or more electronic documents to be provided to the recipient (see, e.g., column 5 lines 18-27 teaching papers database 60 that stores papers that have been submitted to the system). Alternatively, Tweyman further teaches wherein the one or more computing devices are further configured to store the one or more electronic documents to be provided to the recipient (see, e.g., ¶ 118 teaching “The exchange record 700 may also include an access link 752 to the electronic document 630a as it is stored in the storage component 120, 146;” see further ¶ 54 teaching network storage component 120 storing documents separately from the document exchange system 140). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 3. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Tweyman further teaches: The secure document portal system of Claim 1 wherein the retrieval code is displayed in alphanumeric form and/or embedded or encoded in a URL (see Figure 7 and ¶s 115-119 teaching a retrieval QR code 750 that embeds a link to the online copy of the document). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 4. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein causing the retrieval code to be displayed on the delivery notice page or device comprises printing the retrieval code on a paper configured to be delivered to or left at an address associated with the recipient, or sending an electronic message including the retrieval code to an email address, instant messaging address, or text message number or address associated with the recipient (see, e.g., column 9 lines 41-48 teaching that the invention can provide for service by email in jurisdictions where such service is permitted or where special arrangements have been made). Alternatively, Tweyman further teaches wherein causing the retrieval code to be displayed on the delivery notice page or device comprises … sending an electronic message including the retrieval code to an email address, instant messaging address, or text message number or address associated with the recipient (see, e.g., ¶ 110 teaching that the notification can be sent to the recipient via electronic mail or text message). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 5. The combination of Rosenthal and Tweyman teaches the limitations of Claim 3. Rosenthal further teaches: The secure document portal system of Claim 3 wherein receiving, from a user, input including the retrieval code comprises receiving, over a communication network, input of the alphanumeric retrieval code entered by the user, or receiving a request directed to a URL in which the retrieval code is embedded or encoded (see, e.g., column 9 lines 52-58 teaching requiring a user name or password over the internet to access the e-process gateway to get to the web page; see also Figure 2). Alternatively, Tweyman further teaches this limitation (see Figure 7 and ¶s 115-119 teaching a retrieval QR code 750 that embeds a link to the online copy of the document). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 6. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein receiving, from a user, input including the retrieval code further comprises logging an interaction indicating, for an address where the delivery notice page or device displaying the retrieval code was delivered, that the address is viable to be associated with the recipient (see column 8 line 63 to column 9 line 10 teaching determining whether the supplied address is valid and correct, noting that as described in the rejection of Claim 21 above Evans teaches using a “retrieval code”). Alternatively, Tweyman further teaches this limitation (see Figure 7 and ¶s 115-120 teaching a retrieval QR code 750 that embeds a link to the online copy of the document as well as logged interactions such as timestamps 734a and 734b). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 7. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Tweyman further teaches: The secure document portal system of Claim 1 wherein verifying, in response to receiving the user input, that the user is the recipient includes causing display of a page specific to the recipient and specific to the electronic documents associated with the retrieval code (see, e.g., at least ¶s 364-366 and Figure 40 teaching that scanning the document causes display of the specific electronic document related to that QR code that verifies the user). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 8. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein verifying, in response to receiving the input, that the user is the recipient includes confirming that the user can prove their identity with knowledge that corresponds to the personally identifiable information about the recipient (see column 8 lines 35-53 teaching using known security features such as finger/voice/facial recognition technologies or digital or electronic signatures). Alternatively, Tweyman further teaches this limitation (see ¶ 72 teaching requiring a user to enter security credentials such as account password as well as personal information). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 9. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein verifying, in response to receiving the input, that the user is the recipient further comprises recording a digital signature of the user and/or obtaining an email address of the user (see column 8 lines 35-53 teaching using known security features such as finger/voice/facial recognition technologies or digital or electronic signatures). Alternatively, Tweyman further teaches this limitation (see ¶ 72 teaching requiring a user to enter security credentials such as account password as well as personal information and “notification information,” noting that in ¶s 73 and 110 that the notification information includes preferences such as how the recipient will be notified, including “electronic mail”). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 10. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein if the verification is not successful, the system does not provide the user the personally identifiable information about the recipient or the electronic documents (see column 8 lines 35-53 teaching using known security features such as finger/voice/facial recognition technologies or digital or electronic signatures but, “unsuccessful service attempts can be transmitted to the system”).
Claim 12. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein if the verification is successful, the system records a confirmation, for an address where the page or device displaying the retrieval code was delivered, that the address is associated with or a residence of the recipient (see column 8 line 63 to column 9 line 10 teaching determining whether the supplied address is valid and correct, as well as column 8 lines 27-34 teaching configuring and updating transactions to include “confirmation of service” and column line 12 lines 9-14 teaching updating the e-process system with, e.g., email confirmation sent to the attorney or user). Alternatively, Tweyman further teaches this limitation (see ¶ 72 teaching requiring a user to enter security credentials such as account password as well as personal information and “notification information,” noting that in ¶s 73 and 110 that the notification information includes preferences such as how the recipient will be notified, including “electronic mail”). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 15. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 further comprising offering electronic delivery of the electronic documents to the recipient or sending the electronic documents to an email address of the recipient (see, e.g., column 9 lines 41-48 teaching that the invention can provide for service by email in jurisdictions where such service is permitted or where special arrangements have been made). Alternatively, Tweyman further teaches this limitation (see ¶ 72 teaching requiring a user to enter security credentials such as account password as well as personal information and “notification information,” noting that in ¶s 73 and 110 that the notification information includes preferences such as how the recipient will be notified, including “electronic mail”). The rationale for modifying Rosenthal in view of Tweyman is explained in the rejection of Claim 1 above.
Claim 16. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 further comprising sending physical copies of the one or more electronic documents to a physical address of the recipient (see, e.g., Figure 6C and column 11 line 44 to column 12 line 13 teaching printing out electronic document into papers or receiving them via mail and then delivering them in person).
Claim 18. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. Rosenthal further teaches: The secure document portal system of Claim 1 wherein the one or more computing devices are further configured to log any confirmed data to direct an attempt of physical service of process to deliver physical documents corresponding to the electronic documents to the recipient (see column 8 lines 35-53 teaching logging information regarding unsuccessful service attempts in the system, noting that Figure 6C and column 11 line 44 to column 12 line 13 expressly teach printing out electronic document into papers or receiving them via mail and then delivering them in person and recording success or lack of success thereof).
Regarding Claims 19 and 20, these claims are coextensive with Claim 1 above other than that they recite a non-transitory machine-readable medium with instructions stored thereon that when executed by one or more processors perform the same steps as the system of Claim 1 (Claim 19) or a method with the same steps as Claim 1 (Claim 20). The rejection of Claim 1 above is incorporated herein, relying on Rosenthal in view of Tweyman to render the steps obvious. Rosenthal notes that its invention is a method (see at least the Abstract) as well as a computer readable medium (see, e.g., at least column 3 lines 22-30 teaching that the invention is a combination of software and hardware that comprises the computer system). Thus, with these additional teachings, the combination of Rosenthal and Tweyman render obvious the limitations of Claims 19 and 20.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Rosenthal in view of Tweyman and further in view of Kingery (US 2011/0125656).
Claim 11. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. That combination fails to teach, however, Kingery teaches: The secure document portal system of Claim 1 wherein if the user is not the recipient for whom the electronic documents are intended, the system allows the user to submit an address or other contact or location information of the recipient for whom the electronic documents are intended (see ¶ 17 teaching that if the process server is at the wrong address of the individual to be served, the process server can ask the current tenant and/or landlord for information regarding the recipient, such as a forwarding address, which can then be input into the system).
Kingery is similar to Rosenthal, Tweyman, and the instant application because it relates to service of legal process papers (see, e.g., Kingery ¶ 4). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of entering an updated address for the actual intended recipient (as disclosed by Kingery) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman). One of ordinary skill in the art would have been motivated to apply the known technique of entering an updated address because it would allow the process server to continue to try serving the person, eventually at a correct address.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of entering an updated address for the actual intended recipient (as disclosed by Kingery) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of entering an updated address for the actual intended recipient to the known method and system of providing legal service of process, because predictably additional data can be collected and stored with the rest of collected and stored data). See also MPEP § 2143(I)(D).
Claims 13 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Rosenthal in view of Tweyman and further in view of Mossaba et al. (US 2021/0142607, hereinafter “Mossaba”).
Claim 13. The combination of Rosenthal, Best, and Evans teaches the limitations of Claim 1. That combination fails to teach, however, Mossaba teaches: The secure document portal system of Claim 1 wherein if the verification is successful, the system allows the user to provide an updated address of the recipient (see at least ¶ 44 teaching that after the user is authenticated at an ATM, the document can be printed or delivered electronically, and the document “may include instructions for the user to provide additional information regarding the delivery” such as “an updated address, an updated e-mail address,” etc.).
Mossaba is similar to Rosenthal, Tweyman, and the instant application because it relates to ensuring the delivery of important documents to satisfy notice or compliance requirements (see, e.g., Mossaba ¶ 2). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of entering an updated address (as disclosed by Mossaba) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman). One of ordinary skill in the art would have been motivated to apply the known technique of entering an updated address because it would update the system’s record of the correct address for the recipient.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of entering an updated address (as disclosed by Mossaba) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of entering an updated address to the known method and system of providing legal service of process, because predictably additional data can be collected and stored with the rest of collected and stored data). See also MPEP § 2143(I)(D).
Claim 17. The combination of Rosenthal and Tweyman teaches the limitations of Claim 1. That combination fails to teach, however, Mossaba teaches: The secure document portal system of Claim 1 wherein the system allows the recipient to schedule a preferred time for physical delivery of physical documents corresponding to the electronic documents (see at least ¶ 45 teaching that the user can set a reminder “to accept the document at a future time if the user does not accept the document to be delivered” and further instructions relating to the document to be delivered).
Mossaba is similar to Rosenthal, Tweyman, and the instant application because it relates to ensuring the delivery of important documents to satisfy notice or compliance requirements (see, e.g., Mossaba ¶ 2). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of scheduling a preferred time for delivery of the physical documents (as disclosed by Mossaba) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman). One of ordinary skill in the art would have been motivated to apply the known technique of scheduling a preferred time for delivery of the physical documents because it allows the user to receive the documents when the recipient would prefer to receive them, thereby providing a user-friendly feature to the invention.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of scheduling a preferred time for delivery of the physical documents (as disclosed by Mossaba) to the known method and system of providing legal service of process (as disclosed by Rosenthal and Tweyman), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of scheduling a preferred time for delivery of the physical documents to the known method and system of providing legal service of process, because predictably additional data can be collected and stored with the rest of collected and stored data). See also MPEP § 2143(I)(D).
Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Rosenthal in view of Tweyman and Mossaba and further in view of Brannon et al. (US 2020/0356697, hereinafter “Brannon”).
Claim 14. The combination of Rosenthal, Tweyman, and Mossaba teaches the limitations of Claim 13. That combination fails to teach, though analogous reference Brannon teaches: The secure document portal system of Claim 13 wherein the one or more computing devices are further configured to determine whether the updated address of the recipient is in a venue or jurisdiction associated with the electronic documents, and if the updated address of the recipient is not in the venue or jurisdiction associated with the electronic documents, the system cancels delivery of the electronic documents (see, e.g., ¶s 838 and 899 teaching that if a user moves to a new jurisdiction, the system would have to change what it does because there are different rules or regulations in the different jurisdiction).
Brannon is similar to Rosenthal, Tweyman, Mossaba, and the instant application because it relates to determining a person’s location and applicability of legal rights and requirements (see, e.g., Brannon ¶s 838 and 899). Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of assessing whether the user is in a different jurisdiction (as disclosed by Brannon) to the known method and system of providing legal service of process (as disclosed by Rosenthal, Tweyman, and Mossaba). One of ordinary skill in the art would have been motivated to apply the known technique of assessing whether the user is in a different jurisdiction because different regulations and rules may be imposed on the user in the different jurisdiction.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique assessing whether the user is in a different jurisdiction (as disclosed by Brannon) to the known method and system of providing legal service of process (as disclosed by Rosenthal, Tweyman, and Mossaba), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of assessing whether the user is in a different jurisdiction to the known method and system of providing legal service of process, because predictably additional data can be collected and stored with the rest of collected and stored data). See also MPEP § 2143(I)(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Schneider et al., US 2014/0082111 A1; Arguello, US 10,769,289 B1.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached on Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan C. Uber, can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAN P MINCARELLI/Primary Examiner, Art Unit 3626
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