DETAILED ACTION
This action is in response to Applicant’s Request for Continued Examination ("Response”) received on November 4, 2024 in response to the Office Action dated July 5, 2024. This action is made Non-Final.
Claims 1-4 and 7-28 are pending.
Claims 1, 17, and 19 are independent claims.
Claims 1-4 and 7-28 are rejected.
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 .
Applicant’s Response
In Applicant’s Response, Applicant amended claim 7, and submitted arguments against the prior art in the Office Action dated July 5, 2024.
Double Patenting
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.
Claims 1-4 and 7-28 remain rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 10,268,668 and U.S. Patent No. 11,610,048. Applicant stated that the rejection is overcome in view of the filing of the terminal disclaimer submitted with the response dated November 04, 2024, however, the terminal disclaiming does not appear to have been filed.
Claim Rejections - 35 USC § 103
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) 1-9, 11, 12, 15, 17-20, 21-25, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable Rajkumar, US Patent Application Publication US 2014/0068422 (“Rajkumar”), in view of Potnis et al., US Patent Application Publication no. US 2013/0091422 (“Potnis”), and further in view of Werkander et al., US Patent Application Publication no. US 2010/0287147 (“Werkander”).
Claim 1:
Rajkumar teaches or suggests a computer-implemented method for constructing a document from a set of rules, the computer-implemented method comprising:
accessing a set of document passage templates (see para. 0007 - selecting a document template from a template library. The document template comprises a plurality of paragraphs that are associated with document construction rules; para. 0026 - the selected template are combined and formed into a document graph with sections and paragraphs represented as nodes.);
accessing a tree comprising one or more instances of initial rules, wherein at least one of the one or more instances of the initial rules is determined based on a document type specification, and wherein the at least one of the one or more instances of the initial rules comprises a reference to a passage from the document passage templates (see para. 0007 - and selecting a document template from a template library. The document template comprises a plurality of paragraphs that are associated with document construction rules; para. 0026 - Some or all of the paragraphs 107 are associated with any number of document construction rules 131. A document construction rule can be evaluated by a computer, and if the rule "fires" (e.g., is true) the herein-disclosed system will include the paragraph in the final document 130; para. 0030 - Individual rules as are populated into the rules database 104 characterize conditions that can be evaluated before, during and after document construction; para. 0033 - combining entries in the rules database with entries in the template library; para. 0054 - the user selects a contract template 422 that is appropriate to the contract the user wishes to create. then a contract template 422 may include components (e.g., contract clauses appropriate for the type of contract template selected.);
identifying a user interface screen device to display in a human computer interface (HCI) (see Fig. 1; para. 0026 - selected template retrieved from the template library can be an input to an interview process ( e.g., interview GUI 137). The results of user interaction with the; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules and determine the visibility of conditional components. When the interview process is deemed complete, a document template tree can be constructed, which document template tree comprises nodes representing components interview process and the selected template are combined and formed into a document graph with sections and paragraphs represented as nodes.);
receiving user input from the first user interface screen device (see para. 0033 - GUI 137 to answer questions, the answers to which questions are used to evaluate rules and determine the visibility of conditional components; para. 0036 - Revisions and/or modifications may be facilitated by returning (e.g., over path 147) to the interview process; para. 0040 - traversal and annotation of a document tree to apply all applicable rules; para. 0041 - traversal and annotation of a document tree used in a system 300 for inserting rules driven paragraphs into user-designated locations in a document after structural revisions.);
adding, in response to the receiving of the first user input, at least one new instance of a rule to form a modified tree (see Fig. 1, 2, 4; para. 0030 - rule can specify conditions with respect to user-specified parameters (e.g., variables or events). For example a rule might fire (e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range; para. 0033 - GUI 137 to answer questions, the answers to which questions are used to evaluate rules and determine the visibility of conditional components; para. 0036 - Revisions and/or modifications may be facilitated by returning (e.g., over path 147) to the interview process, the act of which can comprise modifying the contents of the set of rules; para. 0037 - allow the user to include/specify conditional (e.g., rules-driven) components in the user-specified locations, which user-specified locations specify where the conditional components are to be included if the condition or conditions or rule or rules evaluate to be "TRUE"; para. 0040 - traversal and annotation of a document tree to apply all applicable rules; para. 0041 - traversal and annotation of a document tree used in a system 300 for inserting rules driven paragraphs into user-designated locations in a document after structural revisions; para. 0048 - even when the user or agent moves an entire container around in the document, any rules-driven components under the container are also moved with the container; para. 0050 - user could also be provided the option to show (e.g., opposite sense of hidden) all rules driven components so as to facilitate the human activities of document authoring and making revisions; para. 0053 – enables users to set up logical clause selection rules that can be used to generate an instance of a contract from a template. The evaluation of the user-defined rules and the application of user input in response to questions posed by such user-defined rules dictate which clauses are to be included in the contract being generated; para. 0057 - answer to a
question can be used to form the conditional part of a rule. For example, a question variable and the user's answer to the question can be used in a rule; para. 0062 - receiving a set of document construction rules based at least in part on an input from a user.);
retrieving at least one item from the set of document passage templates based at least in part on the modified tree (see Fig. 4; para. 0007 - and selecting a document template from a template library. The document template comprises a plurality of paragraphs that are associated with document construction rules; para. 0041 - traversal and annotation of a document tree used in a system 300 for inserting rules driven paragraphs into user-designated locations in a document after structural revisions; para. 0052 - inserting rulesdriven paragraphs into user-designated locations in a document after structural revisions.);
generating a document based at least in part on the modified tree and the at least a portion of the set of document passage templates (see Fig 3; para. 0038 - When revisions and/or modification are deemed complete, then a process serves for traversing the document graph to output an instance of a final document para. 0041 - traversal and annotation of a document tree used in a system 300 for inserting rules driven paragraphs into user-designated locations in a document after structural revisions; para. 0052 - inserting rulesdriven paragraphs into user-designated locations in a document after structural revisions.).
Potnis more specifically teaches or suggests the user interface screen device being based at least in part on the passage from the document passage templates (see Fig. 5A, 5B, 7B; para. 0009 - generating a document of a specific document type that includes a plurality of sections that are specific to a context using a template tree of the specific document type without loss of relevant information while ensuring accuracy and standards to suit said context; para. 0010 - document that is created using (a) a precedent document of that document type or (b) a predefined document that comprises of set of clauses or sub clauses; para. 0011 - template tree for a particular document type consists of text and metadata from various documents of that type and is segregated hierarchically; para. 0013 - first input including a mere selection of at least one template from the plurality of templates. A template tree that corresponds to the at least one template is displayed based on the mere selection. The template tree includes of a set of the plurality of alternative clauses and the plurality of alternative sub-clauses; para. 0044 - contract template library 502 includes one or more contract or document creation templates. Each of the templates includes one or more alternative clauses, and one or more alternative (e.g., competing) sub-clauses corresponding to at least one of the alternative clauses; para. 0049 - conditionally linked inclusive clauses, conditionally linked exclusive clauses.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include the user interface screen device being based at least in part on the passage from the document passage templates for the purpose of efficiently creating documents specific to a context using an interface based on document types, improving document creation, as taught by Potnis (para. 0008).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim(s) 17 and 19:
Claim(s) 17 and 19 correspond to Claim 1, and thus, Rajkumar, Potnis, and Werkander, teach or suggests the limitations of claim(s) 17 and 19 as well.
Claim 2:
Rajkumar teaches or suggests deleting at least one instance of a rule from the modified tree to form a further modified tree (see para. 0004 - document based on a template may be modified/re-arranged, with clauses and/or entire sections deleted; para. 0044 - activities to review and/or add, and/or delete, and/or otherwise modify the subject document; para. 0045 - nodes and/or their peers and/or containers had been moved around or deleted; para. 0054 - clauses should be removed from the contract or that another clause should be substituted for one or more clauses in the contract, based on the evaluation of one or more rules.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim 3:
Rajkumar teaches or suggests wherein a rule pertaining to at least one question derives from a template (see Fig. 4; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules; para. 0054 - One or more of the rules contained within each contract template 422 may include one or more user-defined questions that require user input.).
Claim 4:
Rajkumar teaches or suggests wherein the document passage templates comprise at least one of, a paragraph, a plurality of paragraphs, or a figure, or any combination thereof (see para. 0007 - and selecting a document template from a template library. The document template comprises a plurality of paragraphs that are associated with document construction rules; para. 0026 - document template 109 as used herein and as is embodied in the template library 106 comprises a reading flow organized into one or more containers (e.g., sections, possibly hierarchical sections) which in tum comprise components (e.g., paragraphs 107). Some or all of the paragraphs 107 are associated with any number of document construction rules; para. 0054 - document template is embodied as a contract template, then a contract template 422 may include components (e.g., contract clauses appropriate for the type of contract template selected).
Claim 7:
Rajkumar further teaches or suggests wherein a rule comprises a first ruleset of rules that have fired and second ruleset of rules that have not fired (see para. 0026 - A document construction rule can be evaluated by a computer, and if the rule "fires" (e.g., is true) the herein-disclosed system will include the paragraph in the final document; para. 0030 - Individual rules as are populated into the rules database 104 characterize conditions that can be evaluated before, during and after document construction. A rule can specify conditions with respect to user-specified parameters (e.g., variables or events). For example a rule might fire (e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range.).
Claim 8:
Rajkumar further teaches or suggests wherein at least one of the rules comprises a firing condition and a firing status (see para. 0026 - A document construction rule can be evaluated by a computer, and if the rule "fires" (e.g., is true) the herein-disclosed system will include the paragraph in the final document; para. 0030 - Individual rules as are populated into the rules database 104 characterize conditions that can be evaluated before, during and after document construction. A rule can specify conditions with respect to user-specified parameters (e.g., variables or events). For example a rule might fire (e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range; para. 0036 - modifying the contents of the set of rules, and/or changing conditions, or parameters, or recording the status such as the occurrence or absence of occurrence of an event.).
Claim 9:
Rajkumar further teaches or suggest generating an output document corresponding to the document type specification (see para. 0038 - When revisions and/or modification are deemed complete, then a process serves for traversing the document graph to output an instance of a final document; para. 0054 - template, then a contract template 422 may include components (e.g., contract clauses appropriate for the type of contract template selected).
Claim 11:
Rajkumar further teaches or suggest wherein the user interface screen device is a question group (see Fig. 4; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules; para. 0054 - One or more of the rules contained within each contract template 422 may include one or more user-defined questions that require user input. to questions defined within one or more rules.).
Claim 12:
Rajkumar further teaches or suggests wherein the user interface screen device comprises a dynamically-generated question group, and wherein composition of the question group is based at least in part on a user input (see Fig. 4; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules; para. 0053 - embodiments of the present disclosure enable users to define new rules and to specify the allowable manually input answers to the user-defined questions; para. 0054 - One or more of the rules contained within each contract template 422 may include one or more user-defined questions that require user input. May include one or more user-defined questions that require user input. to questions defined within one or more rules. user-defined rules may include user-defined questions, or the questions may be part of the embodiment of the contract expert system software application).
Claim 15:
Rajkumar teaches or suggests wherein the question wherein the at least one question corresponds to at least one of, a numeric answer, or a string answer, or a checkbox Boolean answer, or a pulldown menu item selection answer, or any combination therefrom (see para. 0030 - A rule can specify conditions with respect to user-specified parameters (e.g., variables or events). For example a rule might fire ( e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range; para. 0033 - the answers to which questions are used to evaluate rules; para. 0053 – answers to such user-defined questions may, in turn, be used by one or more rules to determine which clauses are to be selected for inclusion in a customized contract (e.g., via a contract include-exclude parameter). The evaluation of the user-defined rules and the application of user input in response to questions posed by such user-defined rules dictate which clauses are to be included in the contract being generated.).
Claim 18:
Rajkumar further teaches or suggests performs acts of deleting one instance of a rule from the modified tree to form a second modified tree (see para. 0004 - document based on a template may be modified/re-arranged, with clauses and/or entire sections deleted; para. 0044 - activities to review and/or add, and/or delete, and/or otherwise modify the subject document; para. 0045 - nodes and/or their peers and/or containers had been moved around or deleted; para. 0054 - clauses should be removed from the contract or that another clause should be substituted for one or more clauses in the contract, based on the evaluation of one or more rules.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim(s) 20:
Claim(s) 20 correspond to Claim 18, and thus, Rajkumar, Potnis, and Werkander, teach or suggests the limitations of claim(s) 20 as well.
Claim 21:
Rajkumar teaches or suggests implements a rules engine that, responsive to a remove command, deletes one or more entries from the tree (see para. 0004 - document based on a template may be modified/re-arranged, with clauses and/or entire sections deleted; para. 0044 - activities to review and/or add, and/or delete, and/or otherwise modify the subject document; para. 0045 - nodes and/or their peers and/or containers had been moved around or deleted; para. 0054 - clauses should be removed from the contract or that another clause should be substituted for one or more clauses in the contract, based on the evaluation of one or more rules.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim 22:
Rajkumar teaches or suggests implements a rules engine that, responsive to a remove command, carries out the act or adding to the tree (see para. 0004 - document based on a template may be modified/re-arranged, with clauses and/or entire sections deleted; para. 0044 - activities to review and/or add, and/or delete, and/or otherwise modify the subject document; para. 0045 - nodes and/or their peers and/or containers had been moved around or deleted; para. 0054 - clauses should be removed from the contract or that another clause should be substituted for one or more clauses in the contract, based on the evaluation of one or more rules.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim 23:
Rajkumar further teaches or suggests instructions, when stored in memory and executed by one or more processors implements a rules engine that, responsive to a command, fires another rule (see para. 0026 - user operation of the aforementioned template generation tool includes reading and writing individual rules to/from the rules database. Document construction rule can be evaluated by a computer, and if the rule "fires" (e.g., is true) the herein-disclosed system will include the paragraph in the final document; para. 0030 - Individual rules as are populated into the rules data base 104 characterize conditions that can be evaluated before, during and after document construction. Rule might fire (e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range. Or, for example, a rule might evaluate to "TRUE" if a particular event had occurred.).
Claim 24:
Rajkumar further teaches or suggests wherein the rules engine parses a then-current tree to generate the document (see para. 0026 – document construction rule can be evaluated by a computer, and if the rule "fires" (e.g., is true) the herein-disclosed system will include the paragraph in the final document 130. Document construction rules are evaluated prior to outputting a final; para. 0038 - When revisions and/or modification are deemed complete, then a process serves for traversing the document graph to output an instance of a final document; para. 0040 - application of rules serves to both evaluate the rules and then take actions based on the value or conditions of the evaluated rules. When the rules have been applied, a final document is output. g., an instance of a document template tree 112). Such a technique can include traversal and annotation of a document tree to apply all applicable rules before outputting any portion of the final document; para. 0051 – traversal and annotation of a document tree to apply all applicable rules before outputting any portion of the final document.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim 25:
Rajkumar further teaches or suggests wherein the tree comprises a first set of data items that pertains to an HCI (see Fig. 1; para. 0026 - selected template retrieved from the template library can be an input to an interview process (e.g., interview GUI 137). The results of user interaction with the; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules and determine the visibility of conditional components. When the interview process is deemed complete, a document template tree can be constructed, which document template tree comprises nodes representing components interview process and the selected template are combined and formed into a document graph with sections and paragraphs represented as nodes.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of efficiently manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claim 27:
Rajkumar further teaches or suggests wherein at least one of the tree or the modified tree comprises a root node corresponding to the document type specification (see Fig. 1; para. 0028 - visual depiction of one embodiment of a document template graph is shown as document template tree 112, which forms from root node 111; para. 0054 - plurality of document templates (e.g. a plurality of contract templates 422) can stored in a template library 106. In the specific case where document template is embodied as a contract template.).
Werkander more specifically teaches or suggests that the tree is a ruletree (see para. 0012 - comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively; para. 0028 – When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node; para. 0031 - root node is associated with its own, independent document; para. 0055 - structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include that the tree is a ruletree for the purpose of manipulating documents in a quick and simple manner based on rules organized in a structure corresponding to the documents, improving document structure creation and changes, as taught by Werkander (para. 0055).
Claims 10, 13, 14, 16, 26, and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar, in view of Potnis, in view of Werkander, and further in view of Lutwyche, US Patent Application Publication US 2013/0238987 (“Lutwyche”).
Claim 10:
Rajkumar fails to explicitly disclose wherein the document type specification comprises at least one of, a non-final office action reply, a final office action reply, a pre-appeal brief, or an appeal brief.
Lutwyche teaches or suggests wherein the document type specification comprises at least one of, a non-final office action reply, a final office action reply, a pre-appeal brief, or an appeal brief (see para. 0032 - The patent prosecution preparation unit 200 processes an original claim set 225 and Office Action documents 230, to produce an edited claim set 235, prosecution response documents; para. 0034 - patent prosecution preparation unit 200 constructs portions of the text for a Response to the Office Action; para. 0036 - combines all of the above information to form portions of the prosecution response documents 240; para. 0102 - select the type of response to be generated; para. 0109 - box marked "rejection type" in FIG. 8E, the applicant is able to select from templated arguments to place in the response to the office action; para. 0133 - for a response to the office action is constructed and output based on one or more of the words of the patent claims, the words of the amended patent claims, and the information regarding the office action; para. 0136 - techniques are adaptable to any patent system. Thus, patent claim editing and response preparation for other patent offices and systems are within the scope of the embodiments of this disclosure.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include wherein the document type specification comprises at least one of, a non-final office action reply, a final office action reply, a pre-appeal brief, or an appeal brief for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Claim 13:
Rajkumar teaches or suggests wherein the user interface screen device comprises a dynamically-generated question group, and wherein composition of the question group (see Fig. 4; para. 0033 - by combining entries in the rules database with entries in the template library, a user 105 can use an interview GUI 137 to answer questions, the answers to which questions are used to evaluate rules; para. 0053 - embodiments of the present disclosure enable users to define new rules and to specify the allowable manually input answers to the user-defined questions; para. 0054 - One or more of the rules contained within each contract template 422 may include one or more user-defined questions that require user input. May include one or more user-defined questions that require user input. to questions defined within one or more rules. user-defined rules may include user-defined questions, or the questions may be part of the embodiment of the contract expert system software application).
Lutwyche teaches or suggests composition is based at least in part on a USPTO office action document (see para. 0032 - The patent prosecution preparation unit 200 processes an original claim set 225 and Office Action documents; para. 0036 - takes input from the Office Action documents 230, if any such documents exist. The Office Action documents 230 may include, for example, Rejections, Final Rejections, Advisory Actions, Office Actions indicating a noncompliant amendment, or any other correspondence from the Patent Office regarding the application; para. 0133 - for a response to the office action is constructed and output based on one or more of the words of the patent claims, the words of the amended patent claims, and the information regarding the office action).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include composition is based at least in part on a USPTO office action document for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Claim 14:
Lutwyche further teaches or suggests wherein the USPTO office action document is at least one of, a non-final office action, a final office action, a notice of allowance, or a notification of missing parts (see para. 0032 - The patent prosecution preparation unit 200 processes an original claim set 225 and Office Action documents; para. 0036 - takes input from the Office Action documents 230, if any such documents exist. The Office Action documents 23 0 may include, for example, Rejections, Final Rejections, Advisory Actions, Office Actions indicating a noncompliant amendment, or any other correspondence from the Patent Office regarding the application.).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include wherein the input USPTO office action document is at least one of, a non-final office action, a final office action, a notice of allowance, or a notification of missing parts for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Claim 16:
As indicated above, Rajkumar teaches questions with answer strings.
Lutwyche further teaches or suggests wherein the question group comprises a question string having a string value “claim”, or a string value “argue” (see para. 0032 - The patent prosecution preparation unit 200 processes an original claim set 225 and Office Action documents; para. 0036 - takes input from the Office Action documents 230, if any such documents exist. The Office Action documents 23 0 may include, for example, Rejections, Final Rejections, Advisory Actions, Office Actions indicating a noncompliant amendment, or any other correspondence from the Patent Office regarding the application; para. 0036 - takes input from the applicant, via the user interface 250, regarding how the applicant intends to argue with the Patent Office position and/or amend the claims; para. 0133 - for a response to the office action is constructed and output based on one or more of the words of the patent claims, the words of the amended patent claims, and the information regarding the office action).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include wherein the question group comprises a question string having a string value “claim”, or a string value “argue” for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Claim 26:
As indicated above, Rajkumar and Werkander teach the ruletree.
Lutwyche further teaches or suggests a second set of data items that pertain to a USTPO office action response document (see para. 0032 - The patent prosecution preparation unit 200 processes an original claim set 225 and Office Action documents; para. 0036 - takes input from the Office Action documents 230, if any such documents exist. The Office Action documents 23 0 may include, for example, Rejections, Final Rejections, Advisory Actions, Office Actions indicating a noncompliant amendment, or any other correspondence from the Patent Office regarding the application; para. 0036 - takes input from the applicant, via the user interface 250, regarding how the applicant intends to argue with the Patent Office position and/or amend the claims; para. 0133 - for a response to the office action is constructed and output based on one or more of the words of the patent claims, the words of the amended patent claims, and the information regarding the office action).
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include a second set of data items that pertain to a USTPO office action response document for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Claim 28:
As indicated above, Rajkumar teaches or suggests the document type specification.
Lutwyche teaches or suggests wherein the document type specification corresponds to a USPTO office action response document (see para. 0102 – allow the applicant or applicant's representative to select the type of response to be generated. Depending on the type of Office Action, some of the check boxes may not be available; para. 0109 – box marked "rejection type" in FIG. 8E, the applicant is able to select from templated arguments to place in the response to the office action;
Accordingly, it would have been obvious to one having ordinary skill before the effective filing date of the claimed invention to modify the system and method, taught in Rajkumar, to include wherein the document type specification corresponds to a USPTO office action response document for the purpose of efficiently forming a response based on specific selections, improving the construction of office action responses, as taught by Lutwyche (0036, 0109, 0133).
Response to Arguments
Response to arguments under 35 USC §103:
Applicant argues that none of the cited references, individually or in combination, teach, disclose, or even suggest at least “adding, in response to the receiving of user input, at lease one new instance of a rule to form a modified ruletree.”
The Examiner respectfully disagrees.
Rajkumar teaches rule can specify conditions with respect to user-specified parameters (e.g., variables or events). Para. 0030. For example a rule might fire (e.g., evaluate to "TRUE") if a condition is true, or if a variable or parameter 127 holds a particular value or range. Id. Further, GUI 137 to answer questions, the answers to which questions are used to evaluate rules and determine the visibility of conditional components. Para. 0033. Further, Revisions and/or modifications may be facilitated by returning (e.g., over path 147) to the interview process, the act of which can comprise modifying the contents of the set of rules. Para. 0036. Further, allow the user to include/specify conditional (e.g., rules-driven) components in the user-specified locations, which user-specified locations specify where the conditional components are to be included if the condition or conditions or rule or rules evaluate to be "TRUE". Para. 0037. Further, traversal and annotation of a document tree used in a system 300 for inserting rules driven paragraphs into user-designated locations in a document after structural revisions. Para. 0041. Further, even when the user or agent moves an entire container around in the document, any rules-driven components under the container are also moved with the container. Para. 0048. Further, user could also be provided the option to show (e.g., opposite sense of hidden) all rules driven components so as to facilitate the human activities of document authoring and making revisions. Para. 0050. Further, enables users to set up logical clause selection rules that can be used to generate an instance of a contract from a template. Para. 0053. The evaluation of the user-defined rules and the application of user input in response to questions posed by such user-defined rules dictate which clauses are to be included in the contract being generated. Id. Further, - answer to a question can be used to form the conditional part of a rule. Para. 0057. For example, a question variable and the user's answer to the question can be used in a rule. Id. Further, receiving a set of document construction rules based at least in part on an input from a user. Para. 0062. Fig. 1 shows document construction rules based on user input and corresponding to a document tree. In these sections, Rajkumar appears to teach or suggest adding rules corresponding to a document tree to form modified document trees. Werkander teaches comprise module rules, which are caused to state whether a specified module shall be comprised in a document, and field rules, which are caused to state whether a specified field shall be comprised in the specified module, and secondly is caused to be built up as an ordered tree structure, wherein each parent node comprises a module rule and wherein each subnode of each such parent node is either an additional parent node or comprises a field rule, and wherein each leaf is a field rule, in that at least one module rule is caused to state whether a specified module shall be comprised in a document. is located in the tree structure, whereby the document is caused to be built up successively. Para. 0012. Further, When such an ordered tree structure is used, the structure itself of the rules in the rule database 9 will define the structure and order for the contents that potentially may occur in a document. traversing the tree structure in the predetermined order, starting from a certain root node. Para. 0028. Further, root node is associated with its own, independent document. Para. 0031. Further, structure of one or several types of documents may change or be created quickly and simply, by changing the rules of the rule database and its tree structure. Para. 0055. For example, individual modules may be added to or removed from documents, the ordering may be altered, new documents be created based upon already existing contents in other types of documents. Id. In these sections, Werkander teaches creating and changing rules of a rule tree structure. Accordingly, in combination, Rajkumar and Werkander teach or suggest “adding, in response to the receiving of user input, at lease one new instance of a rule to form a modified ruletree.”
Applicant argues the rejection fails to provide any reasoning at all why Applicants claimed adding, in response to the receiving of the user input, at least one new instance of a rule to form a modified ruletree; is disclosed or rendered obvious by Rajkumar or any combination of Rajkumar and any other cited reference.
The Examiner respectfully disagrees and notes the rejections and response to arguments above.
Conclusion
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/ANDREW T MCINTOSH/Primary Examiner, Art Unit 2144