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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/16/2026 has been entered.
Response to Amendment
This is in response to the amendments filed on 1/16/2026. Claims 1-11 have been amended. Claims 1-11 are currently pending and have been considered below.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claims 1 objected to because of the following informalities:
Claim 1, line 6-8 recite “positions of some of elements of the original version of the electronic document are fixed and remains unchanged, and positions of remaining elements is shifted” which should be changed to --positions of a first subset of elements of the original version of the requested electronic document are fixed and remain unchanged, and positions of remaining elements of the electronic document, not included in the first subset of elements, are shifted--.
Claim 1, lines 10 and 11 recite “to whom the electronic document request was received” which should be deleted, as it’s redundant in view of previous limitation of “receiving an electronic document request from the user”.
Claim 1, line 16 recites “the marked version of the requested electronic document” which should be changed to --the marked version of the original version of the requested electronic document--.
Claim 1, lines 26-27 and page 2, lines 1-2 recites “the determination of the elements displaced according to the initial position of the displaced elements in the original version of the electronic document by the decoder program in the marked version of the electronic document is performed” should be changed to --wherein the determining is performed--.
Claim 1, page 2, lines 2-3 recite “based on the positions of some of the elements of the original electronic document that remain unchanged” which should be changed to --based on the positions of the first subset of elements of the original version of the requested electronic document that remain unchanged--.
Claim 3, lines 1-2 recite “wherein during the marking of the electronic document” which should be changed to --wherein during the marking of the original version of the requested electronic document--.
Claim 4, lines 1-3 recite “wherein in the comparison step, an algorithm is performed to bring the fragment of the marked version of the electronic document into a planar type” which should be changed to --wherein the comparing further comprises performing an algorithm to bring the fragment of the marked version of the electronic document into a planar type--.
Claim 7, line 4 recites “the scale and rotation in space of the original version of the electronic document” which should be changed to --a scale and rotation in space of the original version of the electronic document--.
Claim 11, lines 3-4 recite “by the encoder program according to the fragment of the marked version of the electronic document by the encoder program” which should be changed to --by the encoder program according to the fragment of the marked version of the electronic document--.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-11 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.
Claim 1, line 12 recites the limitation “wherein a position of a remaining element in a line of the electronic document”, however it’s unclear as to which specific “electronic document” is being referred to here. In the preamble of claim 1, Applicant generally refers to “an electronic document”, but then within the body of claim 1 Applicant seems to primarily refer to positions of the “original version of the electronic document”. Thus, given the multiple instances of labeling “an electronic document” throughout the claim, any limitation which merely refers to only “the electronic document” are considered indefinite. The examiner recommends Applicant either attempt to condense the labels used throughout claims 1-11 for the “electronic document” or ensure that clear antecedent basis is established and utilized to refer back to which specific version of the “electronic document” is being acted upon.
Claim 1 was amended to recite the limitation “… wherein a position of a remaining element is in a line of the electronic document, is shifted by one pixel in a left direction …, or shifted by one pixel in a right direction …”, however it’s unclear as to how one could reasonably ascertain what a “left direction” and “right direction” are without providing further definition as to what these directions are relative to. For example, if a first person is viewing a document right-side up, as opposed to a second person viewing the document up-side down, the “left direction” and “right direction” would be opposite for each person, depending on the orientation of the document. Thus, the terms “left direction” and “right direction” without further context are considered indefinite by themselves.
Claim 1, line 24 recites “identifying the user receiving the marked version of the electronic document”, however this limitation is unclear as it appears the user is receiving “the marked version of the requested electronic document” (see line 16), and not the “marked version of the electronic document” disclosed within the preamble. Additional clarification is required.
Claim 3, lines 2-3 recite “… and the positions of even words in the line of the electronic document … and positions of odd words in the line of the electronic document”, however the term “electronic document” is unclear here, as it appears claim is directed towards further limiting the “marking” limitation, which is directed towards the “original version of the requested electronic document” rather than the “electronic document” itself. As stated by the examiner above, Applicant’s choice to utilize multiple labels to represent the “electronics document” throughout the claims has unintentionally added layers of indefiniteness, and the examiner recommends Applicant either attempts to streamline these labels for clarification purposes, or to proofread the claim further to ensure proper antecedence is being established amongst these terms.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL B POTRATZ whose telephone number is (571)270-5329. The examiner can normally be reached on M-F 10 A.M. - 6 P.M. CST.
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/DANIEL B POTRATZ/Primary Examiner, Art Unit 2491