Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reissue Applications
2. Reissue application 17/588,656 was filed on 01/31/2022 as a continuation of US 17/086,288 (now RE49576) and a reissue of US Patent 10,185,712 B2.
Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this reissue proceeding and all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. 37 CFR 1.171 through 1.178 are rules directed to reissue.
3. The broadening continuation reissue application is timely filed as the parent reissue application (US Application 17/086,288) indicated an intent to broaden within two years from the grant of the original patent (US 10,185,712 B2, issue date 01/22/2019).
The assignee is Seal Software Limited.
4. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/27/2024 has been entered.
5. Claims 1-18 are pending. Claims 1, 7, and 13 have been further amended.
Reissues
6. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 10,185,712 B2 or RE49576 is involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Claim Objections
7. Claims 1, 7, and 13 is objected to because of the following informalities: The claim appears to have a typographical error in the phrase, “provide a first set of clauses corresponding of the plurality of documents” which should read “to” instead of “of”. Appropriate correction is required.
Oath/Declaration
35 U.S.C. 251
8. Claims 1-18 are rejected under 35 U.S.C. 251 because the reissue application is not correcting an error in the original patent, because original claims 1-18 would be superseded by the reissuance of claims 1-18 in the other reissue application, RE49576. See MPEP 1451.
It is advised Applicant follow the procedure similar to the one below outlined in MPEP 1451 (note this applies to continuations as well):
If there are patent claims 1 – 10 in two divisional reissue applications and an applicant wishes to revise claim 1, which is directed to AB (for example) to ABC in one divisional reissue application, and to ABD in a second divisional reissue application, applicant should do the following: Claim 1 in the first divisional reissue application can be revised to recite ABC. Claim 1 in the second divisional reissue application would be canceled, and new claim 11 would be added to recite ABD. The physical cancellation of claim 1 in the second divisional reissue application will not prejudice applicant’s rights in the amended version of claim 1 because those rights are retained via the first reissue application. Claim 1 continues to exist in the first reissue application, and both the first and second reissue applications taken together make up the totality of the correction of the original patent.
Recapture
9. Claims 1-18 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth below. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion below. The error statement references limitations that fall within the realm of recapture, as such the error statement stating that removal of previously surrendered subject matter during the prosecution of the original application is improper and the declaration is further considered defective for this reason as outlined below.
10. Claims 1-18 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
It is noted that the following is the three step test for determining recapture in reissue applications (see: MPEP 1412.02(I)):
“(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.”
(Step 1: MPEP 1412.02(A)) In the instant case, and by way of the amendment, Applicant seeks to broaden independent claims 1, 7, and 13 in this reissue at least by deleting/omitting the patent claim language requiring, “analyze, using the semantic language evaluator, the plurality of documents according to the primary policy to automatically provide a first set of clauses…”
(Step 2: MPEP 1412.02(B)) The record of the prior 15/723,023 application prosecution indicates that in an Examiner’s Interview held on 09/04/2018 and a subsequent Notice of Allowance on 09/12/2018, Applicant authorized the Examiner to amend the independent claims to include several features including the term “automatically” in the phrase, “analyze, using the semantic language evaluator, the plurality of documents according to the primary policy to automatically provide a first set of clauses…”
Thus, the limitations omitted in the reissue claim(s) were added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. The nature of the addition via authorization of an Examiner’s amendment to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. See MPEP 1412.02. The nature of adding limitations to obviate the rejection may be made via Examiner’s amendment. Applicant is bound only by applicant’s revision of the application claims (including Examiner’s amendments authorized by applicant). See MPEP 1412.02.
Therefore, in the instant case the claimed limitation phrase “automatically” in the step reciting, “analyze, using the semantic language evaluator, the plurality of documents according to the primary policy to automatically provide a first set of clauses…” is surrendered subject matter and the broadening of the reissue claims, as noted above, are in the area of the surrendered subject matter.
(Step 3: MPEP 1412.02(C)) It is noted that reissue claims 1-18 were not materially narrowed in other respects that relate to the surrendered subject matter to avoid recapture.
Claim Rejections - 35 USC § 112
11. 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.
12. Claims 1-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The claims currently presents one coverage in reissue application RE49576 and another in the present reissue application. This is inconsistent for reasons outlined above under the rejections under 35 U.S.C. 251.
Claim Interpretation
13. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
14. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1:
“One or more processors to: analyze…the plurality of documents according to a primary policy…generate a mirror document based upon the plurality of documents by automatically replacing one or more portions of the plurality of documents having allowable variations with corresponding variables; parse the mirror document generate a second set of clauses…analyze the plurality of documents according to secondary policy to automatically provide a third set of clauses…obtain a difference between the mirror feature data and the standard exact feature data…and update, automatically, a database to identify the standard and non-standard clauses…”
“a semantic language evaluator configured to assess a level of semantic similarity between clauses…”
In claim 2:
“one or more processors to receive one or more features…and generate a plurality of feature replaced clauses…”
In claim 3:
“one or more processors to identify a portion of the clause example as corresponding to an allowable variation of the clause example; replace the allowable variation with a corresponding variable”
In claim 4:
“one or more processors to: parse the plurality of documents to generate the second set of clauses…”
In claim 5:
“one or more processors to replace one or more clauses…”
In claim 6:
“one or more processors to obtain a difference between the set of clauses and a first portion of the set of clauses…”
In claim 7:
“a semantic language evaluator configured to assess a level of semantic similarity between clauses…”
In claim 13:
“one or more processors to: generate a primary policy…analyze the plurality of documents…generate a mirror document…parse the mirror document, analyze the plurality of documents…obtain a difference between the mirror feature data set…update, automatically, a database to identify the standard and non-standard clauses…”
“a semantic language evaluator configured to assess a level of semantic similarity between clauses”
In claims 14:
“one or more processors are further configured to: receive one or more features…generate a plurality of feature replaced clauses…”
In claim 15:
“the one or more processors are further configured to: identify a portion of the clause example…and replace the allowable variation…”
In claim 17:
“one or more processors are further configured to: replace one or more clauses…”
In claim 18:
“the one or more processors are further configured to: obtain one or more non-standard clauses based upon a difference…”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Double Patenting
15. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
13. Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. RE49576. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 of ‘656
Claim 1 of RE 49576
A non-transitory computer readable medium storing program code for determining a presence of a type of clause within a plurality of documents, the program code comprising instructions that when executed by one or more processors cause the one or more processors to:
A non-transitory computer readable medium storing program code for determining a presence of a type of clause within a plurality of documents, the program code comprising instructions that when executed by a processor cause the processor to:
receive a clause example corresponding to the type of clause;
generate a primary policy based upon the received clause example for use in a semantic language evaluator configured to assess a level of semantic similarity between received clauses, the primary policy comprising one or more policy rules and associated with a first threshold value indicating a level of semantic similarity of a clause to the clause example;
analyze, using a semantic language evaluator configured to assess a level of semantic similarity between clauses, the plurality of documents according to a primary policy to provide a first set of clauses corresponding of the plurality of documents, each clause of the first set of clauses corresponding to a standard clause matching a clause example corresponding to the type of clause, the primary policy being associated with a first threshold value indicating a level of semantic similarity of a clause to the clause example;
analyze, using the semantic language evaluator, the plurality of documents according to the primary policy to automatically provide a first set of clauses of the plurality of documents, each clause of the first set corresponding to a standard clause matching the clause example in accordance with the first threshold;
generate a mirror document based upon the plurality of documents by automatically replacing one or more portions of the plurality of documents having allowable variations with corresponding variables;
generate a mirror document based upon the plurality of documents by automatically replacing one or more portions of the plurality of documents having allowable variations with corresponding variables;
parse the mirror document to generate a second set of clauses corresponding to a standard exact feature data set;
parse the mirror document to generate a second set of clauses corresponding to a standard exact feature data set;
generate a secondary policy based upon the primary policy and the clause example for use in the semantic language evaluator, the secondary policy associated with a second threshold value indicating a level of semantic similarity of a clause to the clause example that is lower than the first threshold value;
analyze, using the semantic language evaluator, the plurality of documents according to a secondary policy to automatically provide a third set of clauses comprising non-standard clauses semantically related to but not matching the clause example in accordance with the second threshold, wherein the third set of clauses corresponds to a mirror feature data set, the secondary policy being associated with a second threshold value indicating a level of semantic similarity of a clause to the clause example that is lower than the first threshold value;
analyze, using the semantic language evaluator, the plurality of documents according to the secondary policy to automatically provide a third set of clauses comprising non-standard clauses semantically related to but not matching the clause example in accordance with the second threshold, wherein the third set of clauses corresponds to a mirror feature data set;
obtain a difference between the mirror feature data set and the standard exact feature data set, the difference corresponding to non-standard clauses of the plurality of documents;
obtain a difference between the mirror feature data set and the standard exact feature data set, the difference corresponding to non-standard clauses of the plurality of documents;
update, automatically, a database to identify the standard and non-standard clauses of the plurality of documents associated with the type of clause based upon the obtained difference, for subsequent usage in analyzing the plurality of documents.
update, automatically, a database to identify the standard and non-standard clauses of the plurality of documents associated with the type of clause based upon the obtained difference, for subsequent usage in analyzing the plurality of documents.
Although the claims are not identical, they are not patentably distinct from each other because the semantic language evaluator must utilize a generated first and second policy in assessing the level of semantic similarity between received clauses. Thus, it would have been obvious to include the feature of generating a primary and secondary policy as the claimed semantic language evaluator must utilize such policies in assessing the level of semantic similarity between clauses as required by the claims.
Independent claims 7 and 13 and dependent claims 2-6, 8-12, and 14-18 are similarly rejected under double patenting over claims 7, 13, 2-6, 8-12 and 14-18 of RE49576 for the same reasons as outlined above.
Allowable Subject Matter
16. The prior art of record fails to show either singularly or in combination the combination of features reciting one or more processors to: analyze, using a semantic language evaluator configured to asses a level of semantic similarity between clauses, the plurality of documents according to a primary policy to automatically provide a first set of clauses corresponding to the plurality of documents, each clause of the first set of clauses corresponding to a standard clause matching a clause example corresponding to the type of clause, the primary policy being associated with a first threshold value indicating a level of semantic similarity of a clause to the clause example, generate a mirror document based upon the plurality of documents by automatically replacing one or more portions of the plurality of documents having allowable variations with corresponding variables; parse the mirror document to generate a second set of clauses corresponding to a standard exact feature data set; analyze, using the semantic language evaluator, the plurality of documents according to a secondary policy to automatically provide a third set of clauses comprising non-standard clauses semantically related to but not matching the clause example, wherein the third set of clauses corresponds to a mirror feature data set, the secondary policy being associated with a second threshold value indicating a level of semantic similarity of a clause to the clause example that is lower than the first threshold value; obtain a difference between the mirror feature data set and the standard exact feature data set, the difference corresponding to non-standard clauses of the plurality of documents, as recited in claims 1, 7, and 13 and their corresponding dependent claims.
Response to Arguments
17. Applicant's arguments filed 02/28/2024 have been fully considered but they are not persuasive.
Regarding the rejections under 35 USC 251 Recapture, the features noted above are still lacking in the claimed subject matter. Specifically, the claimed limitation phrase “automatically” in the step reciting, “analyze, using the semantic language evaluator, the plurality of documents according to the primary policy to automatically provide a first set of clauses…” is surrendered subject matter and the broadening of the reissue claims, as noted above, are in the area of the surrendered subject matter.
The claims are further rejected under double patenting for reasons outlined above. The rejections under 35 USC 112(a) have been withdrawn.
Conclusion
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached on M-F 7:30-4PM EST.
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, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
Conferees:
/William H. Wood/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992