USPTO Objections at Abandonment of Patent Application No. 09/113,344


Application No. 09/113,344 was abandoned in April 2001 due to the refusal of the USPTO to accept the claims (the refusal was on technicalities as opposed to any existing overlapping patent – inventor’s understanding).


Status at abandonment:






To Mr. Paul H Kang


Art Unit 2756


Cc: Mr. Mark Rinehart, supervisor



Re: Office Action on Application No. 09/113,344 dated 27 September 2000-12-03



Dear Mr. Kang



Thank you for your thorough examination. All your objections are now addressed. As to your specific objections following the numbering in your office action:


  1. The drawings do show every feature specified in the claims and as a proof a cross-reference is given.

  2. As above a cross-reference matrix between claimed features and drawings is included.

  3. The drawings in conjunction with the detailed design are complete.

  4. Color is now removed.

  5. See 1-3. Amended as required.

  6. Corrected. The abstract is now on a separate sheet and its length has been reduced to less 250 words (215 to be precise) essentially forms an extended paragraph.

  7. The format of the revised specification is now corrected as per your advice on how to arrange the content of the specification.

  8. Good quality double spaced paper is now used.

  9. Claims are now double spaced on good quality paper.

  10. Underlining and coloring removed from claims 2 and 6.

  11. Detailed design has been expanded in a major way to being a full-scale specification fully describing the steps and processes enabling any artisan of ordinary skill to make and use the system.

  12. Agreed and done.

  13. As per 11 a comprehensive detailed design is now given.

  14. Agreed and done.

  15. The revised submission should address all this.


16. The revised submission should address all this.


17. The revised submission should remove any doubt here.

In general reference to objections 18-to-27 inclusive please observe:


The application is about postal messaging. Thus, the supposedly overlapping patents in other fields have no relevance. In particular, I do not make any claims beyond postal messaging and their integration with SMTP messaging. Thus, I do not have any claims per se for email, voicemail or fax as such but I do claim to have presented for the first time the way to integrate postal serviced with Internet SMTP Electronic Messaging. I do not make any claims on SMTP messaging or the use of unified messaging built around SMTP. It is important to understand that my claims are strictly limited to postal messaging and its integration with SMTP email.


As to the specific objections:


18-19-20. Krisnaswamy et al US Pat. No. 5,867,494 on “… integrated video conferencing billing in a communication system architecture” to my best understanding has nothing to do with messaging per se and makes no claims that are even remotely similar. Obviously, just about every modern IT&T application uses messaging including multiple message types as an aid very much the way every FORTRAN program in the 1960s had read and write statements but certainly Krisnaswamy does not make any messaging related claims let alone claims about postal messaging.

As to Maxwell US Pat.No. 5,805,810 his “Netgram” system was in my disclosure statement and in my full disclosure of everything known to me at the time I filed the application clearly explains why Netgram is a conceptually inferior system. Netgram never had any concept about postal addressing and how it could be integrated with messaging. Obviously, anybody can automate the printing of the email body and attachment and pick up a postal address from the body or subject line as with Netgram but this does not elevate Netgram to postal messaging. None of the claims in 5,805,810 overlap mine and simply 5,805,810 is not capable of postal messaging and does not integrate with SMTP.

21. I am not making any claims about having invented any of the authentication methods but their application is unique and novel in postal messaging and in the integration of postal messaging with SMTP messaging, and in fact show how the patent application is a breakthrough that can be work and have utility. There is no way such messaging gets widely accepted without these techniques.


22. Once again in claim 4 I do not claim any exclusivity over billing via use of credit or debit card. Claim 4 simply builds on claim 1 and relates to billing of postal messaging and its integration with SMTP messaging.


23. Most decent IT&T applications have user preferences, and I cannot see what relevance the user preferences in Krisnaswamy-Maxwell have with respect to my patent application.


24. Once again vis Krisnaswamy-Maxwell there is nothing about directing email and facsimile to postal messages, and neither Krisnaswamy-Maxwell nor I make any claims that any of us would have invented this. As I’ve explained the unique inventive aspect is in the extension and integration of SMTP addressing and its application to postal messaging.


25. Again the reference Krisnaswamy-Maxwell has no relevance to my patent application.


26. Chapman, Jr. US Pat No. 4,106,060 presents a very primitive hybrid mail solution that certainly no postal service would ever consider. There are no overlapping claims with 4,106,060. Chapman presents some sort of semi-manual system with a keyboard for a human operator to enter addresses; Chapman’s patent dates back to 1978 when there was no real concept of messaging. Jonathan Postel’s SMTP standard dates back to late 1982. For some odd reason you have included a copy of the standard.

I wish to emphasize that I am not making any claims about SMTP messaging per se.


The reference to Reed et al. US Patent No. 5,862,325 is similar to Krisnaswamy in that neither application has anything to do with messaging per se and certainly absolutely nothing to do with postal messaging. As to Reed having a passing reference to SMTP messaging and support of multiple messaging types has no relevance.


You repeatedly use the stock phrase “it would have been obvious to one having ordinary skills in the art at the time the invention was made to have incorporated …”. The revised detailed design should address any doubts here.


I note with great interest the three USPTO patents by Pitney Bowes Inc. that you enclosed. This is first class innovation by a true innovator in postal services. My patent application certainly would benefit by Pitney Bowes making the down stream postal services more efficient. So yes, including these patents has relevance but there is no overlap.


I urge you to allow all claims 1-7.


Sincerely yours



Ben Livson

Patent Application No. 09/113,344 Inventor

Ph: +61 414 250 437, Fax: +61 2 9958 3915,

36 Minnamurra Road, Northbridge,

NSW 2063, Australia