Filed on behalf of: United States Postal Service
`By: Lionel Lavenue
`
`Erika Arner
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`11955 Freedom Drive
`Reston, VA 20190-5675
`Telephone: 571-203-2750
`Facsimile: 571-203-2777
`E-mail:
`USPS-RMI-CBM@finnegan.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`UNITED STATES POSTAL SERVICE
`Petitioner
`
`v.
`
`RETURN MAIL, INC.
`Patent Owner
`
`
`
`
`U.S. Patent No. 6,826,548
`
`
`
`
`DECLARATION OF JOE LUBENOW, Ph.D.
`
`USPS EXHIBIT 1008
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`Page 1 of 82
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`I.  Introduction ......................................................................................................................... 1 
`
`TABLE OF CONTENTS
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`II.  Qualifications ..................................................................................................................... 1 
`
`III.  Materials Reviewed .......................................................................................................... 3 
`
`IV.  Overview of the Technology ......................................................................................... 4 
`
`V.  Overview of the ’548 Patent ............................................................................................ 6 
`
`VI.  Overview of the ’548 Patent’s Provisional Patent Application ................................ 9 
`
`VII.  Overview of the ’548 Patent’s Reexamination ........................................................ 10 
`
`VIII.  Person of Ordinary Skill in the Art ........................................................................... 28 
`
`IX.  Claim Construction ....................................................................................................... 29 
`
`X.  Certain References Disclose or Suggest All of the Elements Claimed in
`the ’548 Patent .............................................................................................................. 34 
`
`A.  Park Discloses All Elements of Claims 39–44 of the ’548 Patent ............... 34 
`
`B.  1997 ACS Discloses all elements of Claims 39–44 of the ’548 Patent ....... 50 
`
`C.  Claims 39-44 Are Obvious In View of Various References ......................... 63 
`
`XI.  Availability for Cross-Examination ............................................................................. 76 
`
`XII.  Right to Supplement .................................................................................................... 76 
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`XIII.  Conclusion .................................................................................................................... 77 
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`i
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`I.
`
`I, Joe Lubenow, declare as follows:
`
`Introduction
`
`1.
`
`I have been retained by the United States Postal Service (USPS) as an
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`independent expert consultant in this proceeding before the United States Patent and
`
`Trademark Office (USPTO). I am being compensated at my rate of $250 per hour for
`
`the time I spend on this matter. My compensation does not depend on the outcome
`
`of this matter.
`
`2.
`
`Counsel has told me this proceeding involves U.S. Patent No. 6,826,548
`
`(the ’548 patent) (attached as Ex. 1001 to the petition). Ralph M. Hungerpiller and
`
`Ronald C. Cagle filed the application for the ’548 patent on Jan. 24, 2002, as U.S.
`
`Patent Application No. 10/057,608.
`
`3.
`
`It is my opinion that certain references disclose or suggest the features
`
`recited in claims 39-44 of the ’548 patent.
`
`II. Qualifications
`
`4.
`
`I am the President of Lubenow and Associates, a postal consulting firm
`
`located in Chicago, Illinois. Before that, I worked in the postal and mailing industry
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`for more than forty years, starting in 1966 with R.R. Donnelley & Sons Company, a
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`global provider of integrated communications. At R.R. Donnelly, I was a computer
`
`programmer, a manager, and in 1995, Vice President of Postal Affairs for R.R.
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`Donnelley and Metromail Corporation (a subsidiary of R.R. Donnelly that specialized
`
`in computerized marketing information and production services to direct-mail
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`
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`1
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`Page 3 of 82
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`companies). In the relevant 2001–2002 timeframe, I was the President of Lubenow &
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`Associates, a postal consultancy focusing on international and domestic address
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`standardization, mailpiece barcoding, and intelligent mail.
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`5.
`
`The USPS has never employed me. But, in 1991, I was appointed a
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`member of the USPS Mailer’s Technical Advisory Committee (MTAC). MTAC is not
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`a part of the USPS, but is composed of major mailing associations and organizations
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`working with the USPS. MTAC advises the USPS on technical postal matters. In 1995,
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`I was elected to the MTAC Engineering and Technology committee, which discussed
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`postal barcodes. I was the chair of several MTAC committees, and, in 1995, I was
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`elected to the MTAC leadership. From 2001–2002, I was the elected head of the
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`MTAC.
`
`6.
`
`Since 1995, I have also advised the Universal Postal Union (UPU) on
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`matters such as international postal address standards, with the aim of reducing
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`undeliverable-as-addressed mail internationally.
`
`7.
`
` I received a B.A. from Lawrence University in 1964 in philosophy and a
`
`Ph.D. from the University of Chicago in philosophy in 2013. My curriculum vitae,
`
`which includes a more detailed summary of my background, experience, and
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`publications, is attached as Appendix A. I have published a number of articles about
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`mail services and systems and given numerous speeches at conferences and forums.
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`
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`2
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`8.
`
`I am not an attorney and I do not offer any legal opinions. I was hired to
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`be an expert witness once before, in a case that is still pending.1 I have some
`
`experience studying and analyzing patents and patent claims. I am the named inventor
`
`on two issued patents.2 Given my experience and expertise in the field, I can speak
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`authoritatively about what one of ordinary skill in my art would have known, and
`
`when.
`
`III. Materials Reviewed
`
`9.
`
`I have known about and dealt with many of the systems described in the
`
`patents and printed publications I describe here. In forming my opinions, I reviewed
`
`the ’584 Patent, the Provisional Patent Application No. 60/263,788, the prosecution
`
`history of the ’584 patent, the patent’s ex parte reexamination certificate and the
`
`prosecution history of the reexamination, and the following references:
`
` Korean Patent No. 2000-3860 (Park);
`
` Translation Certification for Korean Patent No. 2000-3860 (Park);
`
` The Address Change Service System, as described in Address Change
`
`Service, Publication 8, July 1997 (1997 ACS);
`
` U.S. Patent No. 6,292,709 (Uhl);
`
`1 Secured Mail Solutions LLC v. Advance Image Direct LLC et al., No. 12-cv-01090 (C.D.
`Cal. Jul. 3, 2012).
`
`2 U.S. Patent No. 5,715,398 (filed Mar. 13, 1996) (expired); U.S. Patent No. 4,674,052
`(filed Nov. 7, 1984) (expired).
`
`
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`3
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` U.S. Patent No. 7,778,840 (Krause);
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` U.S. Patent No. 6,457,012 (Jatkowski);
`
` United State Postal Service’s Redirection History, May 1999; and
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` Move Update, April 1997.
`
`10. The entire prosecution history for the original prosecution and the
`
`reexamination of the ’548 patent was made available to me. I reviewed certain
`
`excerpts of that history in detail informing my opinions below.
`
`IV. Overview of the Technology
`
`11. Mailers maintaining customer lists need to incorporate the latest address
`
`information. They require the updates to be fast, secure, reliable, and cost effective.
`
`For at least these reasons, postal services across the world maintain central database
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`records of intended mail recipients who change their address.
`
`12.
`
`Postal services explore the most efficient methods of handling
`
`undeliverable-as-addressed (UAA) mail. Minimizing this costly mail volume ensures a
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`competitive position in the market place and provides services required by their
`
`subscribers.
`
`13.
`
`In 1978, Phase I testing of the first Computerized Forwarding System
`
`(CFS) site was established. Following, in 1979 through 1980, Phase I and II CFS sites
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`expanded geographic areas of responsibility to all large delivery units. Ex. 1018 at 3.
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`
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`4
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`14.
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`Initial testing of the Address Change Service (ACS) system to provide
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`electronic transmission of address correction notification to mailers began in 1982. Ex.
`
`1018 at 3.
`
`15. ACS, for example, is an electronic enhancement to traditional, manual
`
`methods of providing change-of-address (COA) information to mailers. The system
`
`was “designed to reduce the volume of manual (hard copy) address correction
`
`notifications handled by both the Postal Service and mailers and to centralize and
`
`automate the provision of address correction information to mailers.” Ex. 1019 at 3.
`
`16.
`
`“Mailers add a unique code to the address area of their mailpieces to
`
`identify them as ACS participants. As undeliverable-as-addressed (UAA) mailpieces
`
`are subsequently processed at processing centers, for example, Computerized
`
`Forwarding System (CFS) sites, this code prompts the CFS computer system to create
`
`an electronic record of the customer’s move information. These records were
`
`consolidated nightly and electronically transmitted to ACS mailers according to a
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`frequency determined by each ACS mailer.” Ex. 1019 at 3.
`
`17. UAA mail is forwarded, returned to sender, or treated as dead mail, as
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`authorized for the particular mail class. A mailer endorsement is used to request
`
`forwarding, return, change, or address correction service.
`
`18.
`
`Four ancillary service endorsements were used for all mail classes: 1)
`
`Address Service Requested; 2) Forwarding Service Requested; 3) Return Service
`
`Requested; and 4) Change Service Requested. Ex. 1019 at 8.
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`
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`5
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`19. Ancillary service endorsements encoded on mailpieces allowed the
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`senders to obtain on request the addressee’s new address or reason for nondelivery.
`
`These encoded endorsements also provide the Postal Service with instructions for the
`
`disposition of UAA mail once decoded. Ex. 1019 at 8.
`
`20.
`
`Introduction of the National Change of Address (NCOA) in 1986,
`
`involved USPS licensed vendors. These vendors provided NCOA services to mailers.
`
`NCOA venders obtained update addresses, “matching” subscriber’s existing mailing
`
`list with change-of-address information entered at CFS sites. Ex. 1018 at 4.
`
`21.
`
`In 1989, ACS was expanded to provide electronic address corrections to
`
`mailers for mailpieces that were undeliverable for reasons other than a customer move.
`
`Within a few years ACS was expanded to include all classes of mail. Ex. 1018 at 5.
`
`V. Overview of the ’548 Patent
`
`22. The ’548 patent is directed to a method and system for processing mail
`
`data. Ex. 1001, Abstract. Steps include encoding mail data, collecting that data from
`
`mail, electronically updating information, and transmitting that data to be processed.
`
`23.
`
`Independent claim 39 is a method for processing mail data, and includes
`
`the following steps:
`
`decoding, subsequent to mailing of the returned mail items,
`information indicating whether the sender wants a corrected
`address to be provided for the intended recipient, on at least one
`of the returned mail items;
`
`
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`6
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`obtaining an updated address of the intended recipient subsequent to
`determining that the sender wants a corrected address to be
`provided for the intended recipient; and
`electronically transmitting an updated address of the intended
`recipient to a transferee, wherein the transferee is a return mail
`service provider.
`
`Id. at cl. 39.
`
`24.
`
`In the past, this method was performed by workers in receiving
`
`departments for organizations, such as volunteers in a church mail room. The patent
`
`admits this, referencing the old manual way of updating of addresses, which, while
`
`tedious, still did the same thing, and was still done for many, many years prior to 2001.
`
`Ex. 1009.
`
`25.
`
`And as I read it, nothing in the specification or the claims requires or
`
`asks for anything but relaying data—that is the updated mailing of the intended
`
`recipient. The patent’s specification says “the present invention can be realized in
`
`software or a combination of hardware and software,” Ex. 1001 col. 7 ll. 5–10, so the
`
`claims are directed at best to software usable on any general-purpose computer. Later
`
`in the same paragraph the patent’s specification says it can be “loaded in a computer
`
`system” to “carry out these methods.” Id. at 15–17. Thus only generic computer
`
`technology is needed to practice the claimed method, if that.
`
`26.
`
`And again, the patent specification prefers that the system “is
`
`electronically linked by a data line, which may be any conventional
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`7
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`telecommunications data line,” Ex. 1001 at col. 3 ll. 50–55. Thus, the patentee
`
`indicated in 2002 that it needed nothing but conventional telephone lines to practice
`
`the invention.
`
`27.
`
`Independent claims 39, 40, and 42 refer to “electronically transmitting,”
`
`to “transmit,” and “electronically transferring,” respectively. Ex. 1001, cl. 39, 40, 42.
`
`In my opinion, “electronically transmitting” means moving data using electronics,
`
`such as by any general-purpose computer over a telephone or other
`
`telecommunications data line. The specification of the ’548 patent explains, for
`
`example, that the patent sends data files, thus eliminating the need to “retain large
`
`staffs for manually receiving, researching, updating, and re-mailing pieces of mail that
`
`are returned undeliverable.” Ex. 1001 col. 6 ll. 58–65. Thus, the patent envisions using
`
`known technology to make this process more efficient.
`
`28. Claims 39, 40, 41, and 42 describe “decoding” or “encoding”
`
`information. Given that the specification states that postal workers used to “receiv[e],
`
`research, update[e], and re-mail” undeliverable mail, and that this method simply
`
`makes it “automatic,” Ex. 1001 col. 6 ll. 58–65, “decoding” and “encoding” broadly
`
`include reading address data like address blocks and ancillary service endorsements, as
`
`well as reading common postal bar codes in 2002, which anyone with training can
`
`decode. Thus, “decoding” or “encoding” can be done manually, with little or no
`
`“researching” by the employee. Id.
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`29.
`
`Independent claim 41 recites a detector. In my experience, postal
`
`workers must detect bar codes, address codes, and zip codes every day, and have had
`
`to do so since long before this patent was filed.
`
`30.
`
`Independent claim 41 further recites a processor. Nothing I have read in
`
`the specification nor do any of my experiences in the field lead me to believe the
`
`patent means anything but a general-purpose processor. The specification states:
`
`“Even with the availability of address updating services to aid in researching for the
`
`correct address, the process is substantially manual one. …” Id. at ll. 47–50. Given the
`
`patent’s description of the method being performed manually, a processor is
`
`something or someone that can process data, such as the preexisting mail-processing
`
`centers and employees described. Id.
`
`31.
`
`Independent claim 42 further recites a network. Id. at cl. 42. In my
`
`opinion, posting to a network or transmitting data across a network, whether a phone,
`
`internet, telegraph, or mail-center network, was well-known in the mail industry
`
`before January 24, 2001, when the provisional patent application that led to the ’548
`
`patent was filed.
`
`VI. Overview of the ’548 Patent’s Provisional Patent Application
`
`32.
`
`I have been advised that a claim of priority requires that the priority
`
`application support the claims as of the filing date of the priority application. I have
`
`reviewed the provisional patent application for the ’548 patent and it is my opinion
`
`
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`that claims 39–44 of the ’548 patent do not find support for every element in the
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`provisional application.
`
`33.
`
`For example, “determining if the sender wants a corrected address” is an
`
`element common to claims 39–44. I have compared the provisional application and
`
`the ’548 patent, and this step is not disclosed explicitly or, based on my experience,
`
`inherently in the provisional application. The provisional application makes clear that
`
`“[o]nce the corrected up-to-date data base is created for the returned mail of a
`
`subscriber… the updated files are then transferred electronically to the subscriber’s
`
`computer.” Ex. 1003 at 6.
`
`34. Additionally, the provisional application does not disclose claims 42-44
`
`“if the sender does not want a corrected address provided, posting return mail data
`
`records on a network that is accessible to the sender to enable the sender to access the
`
`records.” The provisional application does not even use the word “post”.
`
`35. Based upon my review of the provisional application for the ’548 patent,
`
`it is my opinion that at least the “determining if the sender wants a corrected address”
`
`and “if the sender does not want a corrected address provided, posting return mail
`
`data records on a network that is accessible to the sender to enable the sender to
`
`access the records” steps are not found in the provisional application.
`
`VII. Overview of the ’548 Patent’s Reexamination
`
`36. Counsel informs me that a patent can be reexamined the U.S. patent
`
`office, and that reexamination can result in amendments to the claims. They also
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`inform me that generally those claims cannot include subject matter or users the
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`claims that originally issued did. They inform me that claims can be judged “broader”
`
`even if, in some ways, the claims are narrower. It is my understanding that if a claim is
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`broader in any way, then the claim should not have been permitted to issue from the
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`reexamination proceeding.
`
`37. As outlined below, it is clear to me that the wording of the amended
`
`claims would read on many systems, users, entities, and processes that the original
`
`claims did not.
`
`38. That is because they either omit key steps the old claims had, or add
`
`limitations that actually read on more users or methods than before. Here, I am going
`
`to highlight—using italics and boldface font—the most obvious places where the
`
`original claims have steps later omitted in the new claims (italics) and where new
`
`limitations in the amended claims are, to me, and to those with ordinary skill in my
`
`field, broader than the original claims (boldface). I find it clearest if I compare the
`
`original claims and the amended claims in charts as shown below.
`
`39.
`
` The attorneys inform me that reexamined claim 39 is a method claim
`
`and that the original patent had two independent method claims 1 and 14. Original
`
`method claim 1 read:
`
`1. A method for processing a plurality of undeliverable mail
`items comprising the steps of:
`
`
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`11
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`encoding data including intended recipient identification information
`on each of a plurality of mail items prior to mailing;
`
`receiving those items of the plurality of mail items that are
`returned as being undeliverable;
`
`scanning and decoding the encoded data on the items of
`undeliverable mail to identify intended recipients having
`incorrect addresses; and
`
`electronically gathering updated recipient identification
`electronically transferring to the sender information for the
`identified intended recipients for the sender to update the sender's
`mailing address files.
`
`40. And original method claim 14 read:
`
`14. A method for processing returned mail items sent by a
`subscriber to a recipient, the returned mail items
`incorporating encoded intended recipient identification
`information, the method comprising the steps of:
`
`collecting the returned mail items at a processing location;
`
`identification
`intended recipient
`reading the encoded
`information from the returned mail items to identify
`intended recipients having incorrect addresses;
`
`electronically gathering updated recipient identification
`information including a different an updated address of
`the intended recipient; and
`
`
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`12
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`electronically transmitting updated recipient identification
`information to the subscriber for updating of a subscriber's
`address database.
`
`41. Reexamined claim 39, on the other hand, reads:
`
`39. A method for processing returned mail items sent by a
`sender to an intended recipient, the method comprising:
`
`decoding, subsequent to mailing of the returned mail items,
`information indicating whether the sender wants a
`corrected address to be provided for the intended
`recipient, on at least one of the returned mail items;
`
`obtaining an updated address of the intended recipient
`subsequent to determining that the sender wants a
`corrected address to be provided for the intended
`recipient; and
`
`electronically transmitting an updated address of the
`intended recipient
`to a
`transferee, wherein
`the
`transferee is a return mail service provider.
`
`42.
`
` Below is a chart comparing claim 1 and claim 39 and claim 14 and claim
`
`39. As I see from below, the encoding step from claim 1 and collecting step from
`
`claim 14 are omitted in the current claim 39:
`
`Original Claim
`1. A method for processing a plurality of
`undeliverable mail items comprising the
`steps of:
`encoding data including intended
`recipient identification information on
`each of a plurality of mail items prior to
`
`Reexamination claim
`39. A method for processing returned
`mail items sent by a sender to an intended
`recipient, the method comprising: . . .
`[no encoding step]
`
`
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`mailing;
`receiving those items of the plurality of
`mail items that are returned as being
`undeliverable;
`
`scanning and decoding the encoded data
`on the items of undeliverable mail to
`identify intended recipients having
`incorrect addresses; and
`
`electronically transferring to the sender
`information for the identified intended
`recipients for the sender to update the
`sender's mailing address files.
`
`
`14. A method for processing returned
`mail items sent by a subscriber to a
`recipient, the returned mail items
`incorporating encoded intended recipient
`identification information, the method
`comprising the steps of:
`collecting the returned mail items at a
`processing location;
`reading the encoded intended recipient
`identification information from the
`returned mail items to identify intended
`recipients having incorrect addresses;
`
`decoding, subsequent to mailing of the
`returned mail items, information
`indicating whether the sender wants a
`corrected address to be provided for the
`intended recipient, on at least one of the
`returned mail items;
`
`
`electronically transmitting an updated
`address of the intended recipient to a
`transferee, wherein the transferee is a
`return mail service provider.
`
`39. A method for processing returned
`mail items sent by a sender to an intended
`recipient, the method comprising:
`
`
`[no the collecting step]
`
`decoding, subsequent to mailing of the
`returned mail items, information
`indicating whether the sender wants a
`corrected address to be provided for the
`intended recipient, on at least one of the
`returned mail items;
`
`and electronically transmitting updated
`electronically transmitting an updated
`recipient identification information to
`address of the intended recipient to a
`the subscriber for updating of a
`transferee, wherein the transferee is a
`return mail service provider.
`subscriber's address database.
`43. By omitting the “collecting” and “encoding” steps in claim 39, the claims
`
`now cover organizations that don’t have to “collect” or “encode” the mail themselves.
`
`For instance, another organization may do the collecting or the accused actor may
`
`
`
`14
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`merely receive encoded mail rather than be the organization to encode it. Thus, the
`
`claims now require fewer steps to practice the invention than they once did.
`
`44. Additionally, original claim 1 requires transferring the data to “the sender”
`
`and claim 14 requires transmitting the data to “the subscriber” (which I understand to
`
`be the same as the sender) rather than to the “return mail service provider” as
`
`required in the new claim 39.
`
`45. To me, and to those with ordinary skill in my field, the “return-mail-
`
`service provider” is an entity that provides a service to senders and delivery services.
`
`46.
`
`In some instances, the “return mail service provider” may be a stand-
`
`alone business separate from the sender (also known as a subscriber) or the delivery
`
`service. In other instances, “return mail service provider” may be a part of the sender
`
`(or subscriber). For instance, there are individual organizations—occasionally, as small
`
`as churches or nonprofits—who may handle their own return-mail services in house.
`
`And there are sole proprietorships that could perform all of these administrative tasks,
`
`informing themselves and updating their own address lists. Finally, in some instances,
`
`the “return mail service provider” may be an in-house department of the delivery
`
`service.
`
`47. Thus, the “return mail service provider” can be standalone or part of
`
`different entities in different situations. In other words, the “return mail service
`
`provider” could be the sender or subscriber, but isn’t necessarily.
`
`
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`48. This distinction between the “sender” or “subscriber” and “return mail
`
`service provider” is easiest to describe visually, in the five figures below, which I
`
`prepared with the help of counsel and which I have reviewed and agree with. The five
`
`figures represent different configurations of the entities involved in this process. In
`
`my opinion, these figures illustrate how in some instances, claim 39, as amended in
`
`the reexamination proceeding, has broadened the scope than claim 1 or claim 14.
`
`49.
`
`In Figure A below, there is no “return mail service provider”. This
`
`represents a simple two-party situation, in which the sender sends the mail to the
`
`delivery service provider (1), and as recited in the original claim 1, the “information
`
`for the identified intended recipients” is transferred back “to the sender” (2a). Claim
`
`39 is not represented in Figure A, because there is no return mail service provider in
`
`this example.
`
`Figure A: Sender & Delivery Service Provider
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`
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`50.
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`In Figure B below, the “return mail service provider” is part of the
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`“sender”. This is analogous to the small non-profit or church example that I gave
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`above. Here, the sender sends the mail to the delivery service provider (1), and as
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`recited in the original claim 1, the “information for the identified intended recipients”
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`is transferred back “to the sender” (2a). Because the “return mail service provider”
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`and the “sender” are the same, in the context of claim 39, transmitting an updated
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`address of the intended recipient to the return mail service provider (2b) does not
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`change the scope of the claim.
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`
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`Figure B: Sender with Return Mail Service Provider &
`Delivery Service Provider
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`In Figure C below, the “return mail service provider” is part of the
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`51.
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`“delivery service provider”. Here, the sender sends the mail to the delivery service
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`provider (1), and as recited in the original claim 1, the “information for the identified
`
`intended recipients” is transferred back “to the sender” (2a). Because the “return mail
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`service provider” and the “delivery service provider” are the same, in the context of
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`claim 39, transmitting an updated address of the intended recipient to the return mail
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`service provider (2b) means that the address need only be transferred within the
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`delivery service provider, rather than all the way back to the sender. In at least this
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`respect, claim 39 is broader than claim 1.
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`Figure C: Sender & Delivery Service Provider
`with Return Mail Service Provider
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`In Figure D below, I have introduced a third entity, a “mail service
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`52.
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`
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`provider” which is in between the “sender” and the “delivery service provider”. In
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`this scenario, the “mail service provider” incorporates the “return mail service
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`provider”. Here, the sender sends the mail to the delivery service provider, via the
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`mail service provider (1 & 2), and as recited in the original claim 1, the “information
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`for the identified intended recipients” is transferred back “to the sender” (3a). But, in
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`the context of claim 39, because the “return mail service provider” and the “sender”
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`are not the same, transmitting an updated address of the intended recipient to the
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`return mail service provider (3b) means that the address need only be transferred to
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`the mail service provider (which includes the return mail service provider), rather than
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`all the way back to the sender. In at least this respect, claim 39 is broader than claim 1.
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`Figure D: Sender, Mail Service Provider with
`Return Mail Service Provider & Delivery Service Provider
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`In Figure E below, the “return mail service provider” is a separate entity.
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`53.
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`Here, the sender sends the mail to the delivery service provider, via the mail service
`
`provider (1 & 2), and as recited in the original claim 1, the “information for the
`
`identified intended recipients” is transferred back “to the sender” (3a). But, in the
`
`context of claim 39, because the “return mail service provider” and the “sender” are
`
`not the same, transmitting an updated address of the intended recipient to the return
`
`mail service provider (3b) means that the address need only be transferred to the
`
`return mail service provider, rather than all the way back to the sender. In at least this
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`respect, claim 39 is broader than claim 1.
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`Figure E: Sender, Mail Service Provider,
`Return Mail Service Provider & Delivery Service Provider
`54. As shown above, in at least three of the example explained above
`
`(specifically Figures C, D, and E), claim 39 is broader than claim 1.
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`55. Original computer-readable-medium claim 25 read:
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`25. A computer readable medium containing a computer
`program product comprising instructions for controlling a
`computer system to process a plurality of undeliverable
`mail items, the computer program product comprising:
`
`program instructions that capture optically scanned encoded data
`including intended recipient identification information on each item
`of undeliverable mail and identify intended recipients having
`incorrect addresses;
`
`program instructions that store the captured and identified
`intended recipient data in a data file;
`
`program instructions that update the stored data to
`incorporate an updated address of
`the
`intended
`recipient of each item of undeliverable mail; and
`program instructions that transmit the updated intended
`recipient address information to a subscriber electronically to
`update the address files of the subscriber.
`
`56. On the other hand, reexamined claim 40 reads:
`
`40. A computer program product residing on a computer
`readable medium comprising instructions for causing a
`computer to:
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`store decoded information indicating whether a sender
`wants a corrected address to be provided and a
`customer number, each associated with at least one of a
`plurality of mail items returned subsequent to mailing as
`being undeliverable;
`
`determining from the decoded data that the customer
`wants a corrected address to be provided for at least
`one of the plurality of undeliverable mail items;
`
`receive an updated address of an intended recipient for at
`least one of the plurality of undeliverable mail items,
`subsequent to and based upon the determining step;
`and
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`transmit the updated address to a transferee, wherein
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`the transferee is a return mail service provider.
`
`57. Below is a chart comparing claim 25 and claim 40:
`
`Original Claim
`25. A computer readable medium
`containing a computer program product
`comprising instructions for controlling a
`computer system to process a plurality of
`undeliverable mail items, the computer
`program product comprising:
`program instructions that capture
`optically scanned encoded data including
`intended recipient identification
`information on each item of
`undeliverable mail and identify intended
`recipients having incorrect addresses;
`program instructions that store the
`captured and identified intended recipient
`data in a data file;
`
`Reexam claim
`40. A comp