DETAILED ACTION
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 .
This office action is in response to the Request for Continuation Examination filed on 29 December 2025.
This office action is made Non Final.
Claims 1 and 11 have been amended.
Claims 1-4, 6-14, and 16-20 are pending. Claims 1 and 11 are independent claims.
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/25 has been entered.
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 (i.e., changing from AIA to pre-AIA ) 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, 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.
Claim(s) 1-4, 6-14, 16-20 remain rejected under 35 U.S.C. 103 as being unpatentable over Pennell et al (US 7206998) in further view of Borodovski et al (US 20040205526) in further view of JotForm (“How to Show or Hide Fields Base on User’s Answer”, 12/29/18, 5 pages) in further view of Shwartz et al (US 20140115443, 2014)
As per independent claim 1, Pennell et al discloses a method comprising:
retrieving, from a database system, based on an entity type associated with an entity, a plurality of tagged data fields in a plurality of data fields, each tagged data field in the plurality of tagged data fields corresponding to a database entry in the database system, and labeling a type of data associated with the entity type stored in the database system, an entity type is associated with the plurality of data fields storing information about the entity, the entity is associated with the plurality of data fields (Col 3, lines 18-25, 39-41; Col 4, ll. 25-61: User data associated with labeled fields are retrieved from a database (system). The user data of a user (entity) is stored as one or more user profiles (entity type) wherein the one or more user profiles having different types of data are stored/accessible. (FIG 5, 403 discloses the entity associated with the multiple profiles). For example, the user may have a home profile, work profile, etc. (FIG 5, 404) Each profile is labeled to distinguished one profile from another. (Home, Work,…) The user may specify one of multiple shipping addresses, phone numbers, email addresses, etc, for each profile. FIG 5 or 6 shows the plurality of data fields of one profile to which the user provides data for which is stored. Data from this profile is used to input the corresponding empty fields of an associated web page. For example, the fields of webpage in FIG 4 are automatically filled in by the selected user profile as shown in FIG 7. The combination of these data is viewed as tagged data fields in data fields since these fields in the profile are associated with the field of the webpage. Since the combination of the provided user data with a label field is stored in a database, it is considered a database entry. Furthermore, one of a skilled artisan would realize that if the cited art is able to perform this functionality once, then it will perform the functionality again. Thus, each combination of user data and a label field of each profile of a user stored in the database (system) is own database entry)
generating a user interface (UI) allowing modification of a document content of a template, the template including one or more template merge fields being associated with one or more tagged data fields in plurality of tagged data fields,… the template is used to automatically generate a document by executing template logic associated with the template, …wherein, upon execution of the template logic, the at least one tagged data field is populated with one or more data values from the database system associated with labeled type of data and corresponding to the at least one tagged data field; modifying the document generated in response to executing the template logic associated with the template, (FIG 4-5; Col 3, line 45- Col 4, ll. 18): discloses an editing interface comprising document content and fields to be filled in using a pop-up window. The document, to be modified, has empty fields is a form of a template having one or more template merge fields. The data disclosed in the pop-up window, represented across different fields, is transferred from the window to the fields within the document (template merge fields). Each field in the document is linked to a corresponding field (tagged data field) in the pop-up window. Filling in the fields of the document with the corresponding fields from the data is a form of modification of a document content of a template wherein the template is used to generate a document. Pennell discloses this occurs based the execution of a script (having script logic) associated with the document. The script logic involves learning the format of the form/document and then associates the content and order of the fields for the form with the content of personal data in the user database. For example, it is determined that the field named "Name" on a particular form should be associated with the user's name in the user database. Using the script having script logic, the pop-up window is displayed and utilized allowing the disclosed data, across all fields, is transferred from the window to the fields within the document since, as stated, each field in the document is linked to a corresponding field in the pop-up window. (e.g. field named "Name" on a particular form should be associated with the user's name in the user database.) Furthermore, it is noted, when the fields of the template/document are filled in, it automatically generates a new document using the template which now has filled in fields. In addition, filling in the fields results in template merge fields being associated with one or more tagged data fields in plurality of tagged data fields since the data from the tagged fields are used in the template merge fields. Also, using the script (form of “template logic” with the form), results in a field of the form/document being populated with data values from the databased associated with a stored profile.)
Furthermore, Pennell discloses the use of script logic learning the format of the form/document and then associates the content and order of the fields for the form with the content of personal data in the user database (col 3, ll 12-17) Pennell discloses when encountering the web form, the browser automation program analyzes the underlying structure of the form to determine if there are fields for which data is available from the user database. (col 3, ll 37-40) For example, it is determined that the field named "Name" on a particular form should be associated with the user's name in the user database. In other words, the browser automation program would identify each field of the document and determine if data, associated with each field, is available from a data. After the browser automation program encounters the form, analyzes the form for fields, and links the fields with data from the database, a pop up window appears allowing the user to modify the form with data from the database. Thus, Pennell suggests that a form of content of the document (i.e. fields of the document) being selected for form filling. However, Pennell fails to disclose the display of the pop up window is in response to a field of the form being (manually) selected. In other words, the cited art fails to explicitly disclose wherein the UI is generated based on receiving a selection of document content of the template.
However, Borodovski et al discloses in response to a user selecting a form field of form, a wallet (form of a pop up window) is displayed which comprises a number of data fields and values used for form filling. (0020) The displayed wallet is used to modify the form having blank form fields by populating the blank form fields with a corresponding field data in the wallet. (0021) Thus, Borodovski et al discloses the wallet/pop up window used for modifying the form with blank fields (form of generating the UI) is based on receiving a selection of document content.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to have modified the cited art with the cited feature(s) of Borodovski since it would have provided the benefit of filling in a form, in which the determination of when to transfer information and which information to transfer remains with the user which minimizing the number of user inputs required for transferring. (0009)
However, the cited art fails to explicitly disclose creating, in response to receiving an user input via the UI, one or more logic rules associated with one or more portions of the document content, generating a logic interface within the UI to define one or more logic conditions associated with the one or more tagged data fields and associate the one or more logic conditions with a conditional document section for the document, wherein the one or more logic conditions are organized in a order, wherein the conditional document section for the document is inserted into the document upon satisfying all logic conditions in the one or more logic conditions in accordance with the order; modifying the document,…, upon within the one or more tagged data fields satisfying the one or more logic conditions, to include the conditional document section, and modifying, using the logic interface, responsive to data within the one or more tagged data fields not satisfying the one or more logic conditions, an appearance of the conditional document section to display an alternative conditional document.. However, JotForm discloses the ability for a user to create a logic conditional rule, via user input, associated with a portion of a form (document). JotForm discloses displaying a “logic interface” that allows the user to define conditional logic (one or more conditions) for a field and inputted data and associate the conditional logic with a conditional form field/section when satisfied that’s result in the appearance of the document content being modified. (Page 1-3) Based on the (one or more) condition(s) being satisfied, the document results in additional form fields (conditional document section) being shown that were not previously shown. For example, JotForm discloses the user creating one or more logic condition(s) for one or more document section(s)/new field(s) to be displayed in response to an inputted value for a field matching the created/defined logic condition of that field. In other words, if the inputted value to the selected form field (associated with the label “How do you know us”) satisfies the (one or more) logic condition of that particular field, the document is modified/updated to display a new field (conditional document section). For example, a document displays a question field having the text “How do you know us” having various selectable answers that includes the selectable answer “A friend”. If “A friend” is selected, the document is automatically modified to further display a new field/document section associated with that answer. (Page 1-3). In other words, selecting “a friend” satisfies a logic condition that “a friend” answer was selected and triggers the display of the text “Please enter your friend’s name” and field box (conditional document section). The conditional document section (display of the text “Please enter your friend’s name” and field box) is only inserted once the one or more logic condition(s) is satisfied (selection of “a friend” answer) This particular document section does not appear for any other answer selected. Furthermore, the (one or more) logic condition “IF How did you know us? IS EQUAL TO “A friend”” is in a predetermined order. Furthermore, JotForm discloses modifying, using the logic interface, responsive to data within the one or more tagged data fields not satisfying the one or more logic conditions, an appearance of the conditional document section to display an alternative conditional document. Page 2-3 of JotForm discloses if the selected input value does not satisfy a first condition, then the selected input is tested against another condition to determine if its satisfied. If so, the document is modified with a shown second/alternative field (second conditional document section when the template is used to generate the document) in response to not satisfying the first condition. Furthermore, to bolster their rationale, the Examiner adds that if the first condition is not met, then a second or third condition is checked. For example, if the logic condition “IF How did you know us? IS EQUAL TO “A friend” is not satisfied, then JotForm checks the next condition “If How did you know IS EQUAL to “Website”. Checking the second or third condition is a form of checking for alternative logic conditions that can be satisfied. When one of the alternative logic conditions is satisfied, then an alternative conditional document section corresponding with the satisfied alternative condition is displayed within the conditional document section. Thus, if condition “If How did you know IS EQUAL to “Website” is satisfied, then the display of the text “Please enter the website address” and field box (alternative conditional document section) is triggered. This is view as an alternative display since the first condition was satisfied.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to have modified the cited art with the cited feature(s) of JotForm since it would have provided the intrinsic advantage of providing the user with flexibility by giving the user more control on defining when certain fields appear based on inputted answers.
However, the cited art fails to specifically disclose the template including one or more logic trigger fields being associated with one or more tagged data fields in the plurality of data fields, each logic trigger field in the one or more logic trigger fields is associated with a logic condition configured to be satisfied based on a data value of associated data field for the document having a target relationship to a data value specified in the logic condition; associate the one or more logic conditions with a conditional document section for the document, wherein the one or more logic conditions are organized in a hierarchical order, wherein the conditional document section for the document is inserted into the document upon satisfying all logic conditions in the one or more logic conditions in accordance with the hierarchical order; modifying the document generated in response to executing the template logic associated with the template, upon data within the one or more tagged data fields satisfying the one or more logic conditions, to include the conditional document section.
However, Shwartz discloses, the template logic including one or more logic trigger fields linked to at least one tagged data field in the one or more tagged data fields. (0057, 0063, 0075-0080: Discloses the creation of documents of using inserted placeholders/conditional sections based on the placeholders in response to the provided inputted data. Shwartz discloses a placeholder is a location in a Section that represents data specific to an end-user and be automatically filled by the system via previously defined values by the end user. In addition, placeholders are dependent on specific information provided by the end user wherein placeholders/sections used are dependent on action rules. In other words, a conditional document section is added to a document based on a received value (provided by a user) filled-in at a particular placeholder. For example, Shwartz discloses that if a testator provides information that he/she is married (0095,0098 discloses data by the user being inputted based on the question displayed on FIG 11), then a first particular section for a document is provided; otherwise, if the testator indicates he/she is single then a different (second) section is provided. In addition, Shwartz discloses that if the testator had not been through a divorce, not only would the section 324 not be presented, but the placeholder 320 would not even be presented to the end-user for completion. In addition, 0083 discloses particular specific sections are retrieved if a certain field is triggered. Thus, in summary, based on the data value being received such as if the user selects Married or Single, the section matching the inputted data value is provided to the document. Thus, the martial status field is viewed as logic condition field having one or more logic conditions that triggers a section to be provided based on the inputted data value. This rationale applies to whether or not the provided data value is Divorced or not.
Thus, Shwartz discloses being associated with one or more tagged data fields in the plurality of data fields, each logic trigger field in the one or more logic trigger fields is associated with a logic condition configured to be satisfied based on a data value of associated data field for the document having a target relationship to a data value specified in the logic condition. In addition, Shwartz discloses the template logic when executed is used to automatically generate a document with populated placeholders and inserted conditional document sections (0056-0057, 0080, 0098) (modifying the document generated in response to executing the template logic associated with the template, upon data within the one or more tagged data fields satisfying the one or more logic conditions, to include the conditional document section)
In addition, Shwartz discloses that sections can be nested within other sections to create sub-sections such that particular specific sections and sub-sections are retrieved if a certain field is triggered. (0083, 0093) One of a skilled artisan would have realized that sub-sections are children of a section (e.g. parent section) and are only triggered when the (parent) section is triggered. Thus, sub-sections are conditional on the conditional triggering of the (parent) section. For example, A Marital Status option 504 will also retrieve specific sections (and sub-sections) that are required when the testator is, and/or has been married. 0083 discloses specific sections and sub-sections are retrieved based on marital status. Furthermore, if the testator indicates he/she is divorced then a different section and subsections are provided. For example, 0093/FIG. 10 shows a widow section 1000 appearing and also subsection 1002 appearing in response to section 1000 appearing. In addition, 0082 discloses selecting Male will insert sections (and sub-sections) that use male pronouns as appropriate (e.g., him, he), as well as other sections (and sub-sections) that may be specific to a male testator. Therefore, Schwartz discloses in addition to sections being triggered based on a condition being triggered, sub-sections (child sections) associated with the triggered sections (parent sections) are also triggered. In other words, child sections are also presented based on the satisfying of logic conditions being met in response to logic conditions being met when a (parent) section being triggered for display. Thus, Schwartz discloses conditions are organized in hierarchical matter and the conditional document section for the document is inserted into the document upon satisfying all logic conditions in the one or more logic conditions in accordance with the hierarchical order.
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to have modified the cited art with the cited feature(s) of Shwartz since it would have provided the benefit of automatic generation of customized documents that is easy to use and is accessible to a wide audience of end-users. (0002)
Thus, in conjunction with Pennell, the combination of the cited art teaches generating a user interface (UI) allowing modification of a document content of a template, the template including one or more template merge fields being associated with one or more tagged data fields in the plurality of tagged data fields and one or more logic trigger fields being associated with one or more tagged data fields in the plurality of data fields, the template is used to automatically generate a document by executing template logic associated with the template, each logic trigger field in the one or more logic trigger fields is associated with a logic condition configured to be satisfied based on a data value of associated data field for the document having a target relationship to a data value specified in the logic condition; associate the one or more logic conditions with a conditional document section for the document, wherein the one or more logic conditions are organized in a hierarchical order, wherein the conditional document section for the document is inserted into the document upon satisfying all logic conditions in the one or more logic conditions in accordance with the hierarchical order; and modifying the document generated in response to executing the template logic associated with the template, upon data within the one or more tagged data fields satisfying the one or more logic conditions, to include the conditional document section.
As per dependent claim 2, based on the rejection of claim 1 and the rationale incorporated, JotForm discloses the one or more logic conditions comprise a logic value and a target relationship of the logic value to a value of the one or more tagged data fields for the one or more logic conditions to be satisfied (pg 3, item 3: discloses condition having a value and relationship and when its satisfied)
As per dependent claim 3, based on the rejection of claim 1 and the rationale incorporated, JotForm discloses receiving, via the logic interface, a logic value and the target relationship defining the one or more logic conditions. (pg 3, item 3: user provides the input of the value and relationship)
As per dependent claim 4, based on the rejection of claim 1 and the rationale incorporated, JotForm discloses wherein the target relationship including at least of one of the following of equal to, greater than, less than, and any combinations thereof. (pg 3, item 3: equal)
As per dependent claim 6, based on the rejection of claim 1 and the rationale incorporated, Shwartz disclose wherein generating the logic interface includes displaying the logic interface inline within the document content at a position previously occupied by the portion of the document content (FIG 3; 0076: placeholder is inserted inline with document content. Inserting changes the position of the document content)
As per dependent claim 7, based on the rejection of Claim 1 and the rationale incorporated, Shwartz et al discloses determining the portion of the document based on a current position of a text selection cursor within the UI. (FIG 3; 0076: Shwartz discloses dragging and dropping the appropriate placeholder into an appropriate position within a portion of the document content. It would obvious to one of ordinary skill before the effective filing date of Applicant’s invention that when a user drags and drops object within a document, the user is generally using a mouse to perform the function. The user moves the mouse to the desired object to be dragged (indicated by the displayed mouse cursor), selects the object, and moves the selected object to a desired location within the document, which is generally indicated/shown by the displayed mouse cursor. This would provide the benefit of a visual indicator for increased location precision for dragging and dropping.)
As per dependent claim 8, based on the rejection of Claim 1 and the rationale incorporated, Shwartz et al discloses determining the portion of the document based on a current user selection of document content within the UI. (FIG 3; 0076: discloses dragging and dropping OR manually positioning the appropriate placeholder into the appropriate position within a portion of the document content)
As per dependent claim 9, based on the rejection of Claim 1 and the rationale incorporated, Shwartz et al discloses receiving a selection of a selectable interface element corresponding to logic rule creation. (FIG 3, 7; 0076, 0087: User selects a placeholder from list a possible placeholders)
As per dependent claim 10, based on the rejection of Claim 1 and the rationale incorporated, Shwartz et al discloses defining the one or more logic conditions includes a drag and drop of one or more tagged data fields from a customer relationship management (CRM) integration interface portion to the logic interface. (0076, FIG 3)
As per independent claim 11, Claim 11 recites similar limitations as in Claim 1 and is rejected under similar rationale. Furthermore, Pennell discloses a medium (Claim 18)
As per dependent claims 12-14, Claims 12-14 recite similar limitations as in Claims 2-4 and are rejected under similar rationale.
As per dependent claims 16-20, Claims 16-20 recite similar limitations as in Claims 6-10 and are rejected under similar rationale.
Response to Arguments
Applicant's arguments filed 12/29/25 have been fully considered but they are not persuasive.
On pages 7-12, in regards to the independent claims, Applicant argues that the cited art, Pennell, Borodovski, JotForm, and Shwartz, primarily, JotForm, fail to teach the subject matter/limitations: "the one or more logic conditions are organized in a hierarchical order," and that "the conditional document section for the document is inserted into the document upon satisfying all logic conditions in the one or more logic conditions in accordance with the hierarchical order," Applicant argues that JotForm doesn’t teach this as claimed. Applicant argues that “JotForm is likewise deficient in showing that logic conditions are organized in a "hierarchical order" and that all logic conditions must be satisfied using said "hierarchical order" in order for the conditional document section to be inserted into the document. JotForm's logic begins with "IF" something (e.g., "How did you know us?") "IS EQUAL TO" a value (e.g., "A friend") "SHOW"a field (e.g., "Please enter your friend's name"). This is simply an if-then conditional statement and clearly, not a hierarchical order, where determination of a satisfaction of one logic condition requires first satisfaction of another logic condition that precedes it in the hierarchy. As such, JotForm fails to use hierarchical order of logical conditions for the purposes of determination of whether a particular conditional document section should be inserted into the document once all logical conditions are satisfied in accordance with the hierarchical order of logic conditions” Therefore, Applicant argues that the cited art is silent on the matter. However, the Examiner disagrees.
Based on the arguments provided by the Applicant in respect to claimed features in the claim limitation, the Examiner respectfully submits that the Applicant states that JotForm do not teach the subject matter by merely citing sections of JotForm then allegedly summarizing and concluding that JotForm do not teach the amended limitations. Applicant does not disclose how the claim language of the claim limitation is different from the teachings of JotForm by describing the differences that involve any supporting evidence from the specification stating or describing the limitation, or how JotForm is specifically different from Applicant's invention. Thus, Applicant's arguments fail to disclose how the cited art is silent or doesn't teach on the limitation since the Applicant does not fully describe the differences that involve any supporting evidence from Applicant's specification stating or describing the limitations, or how the cited art is specifically different from the invention itself. Therefore, the Applicant did not explicitly state how Applicant's invention, other than stating JotForm, don’t teach the limitations, is different to prove that the cited art’s functionality does not equivalently teach the limitation.
Furthermore, the Examiner respectfully states that JotForm was not used to teach the argued subject matter of a hierarchical order. However, the Examiner respectfully states the argued subject matter is still taught using Schwartz which the Applicant did not explicitly argue in their Remarks. In other words, Applicant merely stated Schwartz did not teach the limitation(s); but failed to explicitly argue how exactly the language of the claim (limitation) patentably distinguishes itself from Schwartz. After consideration of Applicants arguments of claims 1 and 11, the Examiner respectfully states Applicant’s remarks are not persuasive to overcome the cited rejections and respectfully direct the Applicant to the rejection explained above for the reasons why the claim remains rejected under the same grounds of rejection using Schwartz.
Conclusion
If the Applicant chooses to amend the claims in future filings, the Examiner kindly states any new limitation(s) added to the claims must be described in the specification in such a way as to reasonably convey to one skilled in the relevant art in order to meet the written description requirement of 35 USC 112, first paragraph. To help expedite prosecution, promote compact prosecution and prevent a possible 112(a)/first paragraph rejection, the Examiner respectfully requests for each new limitation added to the claims in a future filing by the Applicant that the Applicant would cite the location within the specification showing support for that new limitation within the remarks. In addition, MPEP 2163.04(I)(B) states that a prima facie under 112(a)/first paragraph may be established if a claim has been added or amended, the support for the added limitation is not apparent, and applicant has not pointed out where added the limitation is supported.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID FABER whose telephone number is (571)272-2751. The examiner can normally be reached Monday - Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Queler can be reached at 5712724140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM M QUELER/Supervisory Patent Examiner, Art Unit 2172
/D.F/Examiner, Art Unit 2172
Prosecution Insights