DETAILED ACTION
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 amendment filed on 12/23/2025.
Claims 1-12 are currently pending in this application. Claims 1 and 11 are amended.
No new IDS has been filed.
Examiner’s Note
Applicants are suggested to include information from figure 9 with related text into the claims to provide a better condition for an allowance.
Response to Arguments
Regarding the IDS, the applicant, in pages 5-6 of the remarks, has argued that “… MPEP 609 states that an English-language equivalent application may be submitted to fulfill this requirement … the English language equivalent application should be separately listed and identified as an English language equivalent in the information disclosure statement … the JP 2020-154778 reference corresponds to the Numata (US 2020/0302076 A1) reference … was implicitly already considered by the Examiner … Secondly, in the present case, Applicant has submitted either a corresponding English-language equivalent reference or a concise explanation of reference for both … although there was a typo … Therefore … should be considered by the Examiner in the next action”.
Applicant’s arguments are not persuasive.
First, as the applicant noted, the English-language equivalent applications have to be submitted to fulfill the requirement of the foreign patent documents, which are not in English language. The applicant does not fulfill the requirement and if there is any typo included in the submission, the applicant must correct the error. Please note that the examiner has considered the US reference, US 2020/0302076, but NOT the foreign patent document JP 2020-154778 without an English language translation.
Secondly, the 37 CFR 1.98 clearly states that “… (a) Any information statement filed under 1.97 shall include the items listed in paragraphs (a)(1), (a)(2) and (a)(3) of this section. (1) A list of all patents … (2) A legible copy of: (i) Each foreign patent … (3)(i) A concise explanation of the relevance …(ii) A copy of the translation if a written English-language translation of a non-English-language document, or portion thereof, is within the possession, custody, or control of, or is readily available to any individual designated in 1.56(c)”. In other words, for consideration of the IDS requires not only (3)(i) a concise explanation of the relevance, but also (ii) a copy of the translation if a written English-language translation is within the possession or readily available to any individual (e.g., the applicant). As the applicant is a person in Japan and the information of the document is included in the specification of the application, a copy of the written English-language translation of the document is the possession or readily available to the applicant.
Therefore, the applicant is requested to provide a copy of the written English-language translation of the document of the IDS for consideration by the examiner.
Regarding the previous 112(b) rejections, the applicant, in pages 7-8 of the remarks, has argued that “… claims 1-12 do not seem particularly unclear … claim 1 describes that a target element such as confidential information is concealed when a document is output in a location that requires higher levels of security (see figures 11-12 of the present application … figure 14 … withdraw the numerous 112 rejections”.
The applicant’s this argument is not persuasive.
As the applicants admitted in the remarks, the claimed limitations are not clear without including information of the specification (e.g., a target element such as confidential information is concealed when a document is output in a location that requires higher levels of security (see figures 11-12 of the present application … figure 14). Please note that although the claims are interpreted in light of the specification, limitations for the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the rejections are maintained. Moreover, the current amendment causes new rejections stated the 112(b)-rejection section below.
The previous 101 rejections to claim 1-11 have been withdrawn in response to the applicant’s amendment/remarks.
Regarding the 102 rejections, the applicant, pages 8-9 of the remarks, has argued that “… claim 1 for example recites … the concealment condition including at least a condition regarding an output place for outputting an output document … Numata does not disclose these features … these features is shown in figure 11 of the present application … referring to the cited reference Numata, a text search of the this document shows that this document does not refer to “place”, “location,” or “position” at all … therefore, applicant submits that Numata does not disclose …”.
The examiner respectfully disagrees with the arguments.
As described above, although the claims are interpreted in light of the specification, limitations for the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus, the features (e.g., shared office, library, convenience store, et.) of the figure 11 of the specification are not included in the claim or interpretations of the claim limitations.
Moreover, the claimed/argued limitations can be interpreted as at least two different descriptions, but only one of them is needed for the rejections (see also the 112b rejections below) as:
(1) the concealment condition (e.g., defining/configuring the concealment condition – the concealment condition defined by check boxes to be selected by the user/manager to define whether conceal/un-releasable or releasable) including at least a condition regarding an output place (e.g., the provided place, such as the user interface, UI) to determine/configure the condition of concealment) for outputting an output document in which (e.g., in which the concealment of the target element is defined/configured or checking one condition) concealment of the target element is performed; - see fig. 4, paras. 0028, 0032 and related text of Numata; or
(2) the concealment condition (e.g., the defined condition to be concealed or ok to release) including at least a condition regarding an output place (e.g., a person in public office) for outputting an output document – see par. 0050 of Numata.
Therefore, the rejections are maintained – see the 102 rejections section below for detail.
The applicants’ arguments regarding the claims 11, 12 and dependent claims for the limitations of claim 1 described above is not persuasive and the response for the argument is similar to the response stated above for the claim 1.
Thus, the applicants’ arguments are not persuasive. Please see amended rejections below for the amended claims. This action is final.
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Applicant is suggested review all claims for clarification and some of these issues (not all because there are too many) are indicated below.
Claims 1 (claims 11 and 12 include similar limitations) recites:
“An information processing system comprising: one or more processors that are implemented with hardware …”, however, it is not clear whether the processors are enclosed with a hardware box or not (e.g., providing ambiguity or open to more than one interpretation);
“… manage a target element and a concealment condition, the target element serving as a concealment target and being included in an input document element of an input document …”, however, it is not clear (1) whether the target element and the concealment condition is managed to serve as a concealment target, etc. or not (or how to manage to server as a concealment target, etc.); (2) whether the target element is serving as a concealment target or a real concealment target – it is not clear to define a boundary of the limitations/components; (3) whether the target element is a part of the input document element of the input document or not (or how to define three different levels of document types);
“… the concealment condition including at least a condition regarding an output place for outputting an output document in which concealment of the target element is performed …”, however, it is not clear (1) how to define the condition regarding the output place; (2) whether the concealment of the target element is performed in the outputting an output document or not; (3) whether the concealment of the target element is performed in the claimed information processing system or not – it is not clear to define a boundary of the limitations/components;
“… perform concealment control to perform the concealment of the concealment of the target element and perform output control to output the output document”, however, it is not clear how to define the perform concealment control to the performance concealment and performing output control to output the output, etc.
Claims 2-10 depend from the claim 1, and are analyzed and rejected accordingly.
Claim 2 recites “… perform control, as the … a replacement element having an external appearance different from an external appearance of …”, however, it is not clear how to define “an external appearance of a document/element” (e.g., color of the document, font size or type, etc.).
Claim 3 recites “… the replacement is predetermined for the target element …”, however, it is not clear how the replacement can be predetermined for the target element before knowing what is the target element is.
Claim 4 recites “… perform control to output information indicating correspondence of a character string and an image that each serve as the target element to a character string and an image that each serve as the replacement element”, however, it is not clear (1) how to define correspondence of a character string and an image; (2) what the limitation, “each serve as the target element to a character string and an image that each serve as the replacement element”, means - it is not clear to define a boundary of the limitations/components.
Claims 5-7 recite “… decide … whether to perform the concealment … on a basis of an installation place of an image output device …”, “… manage the installation place … association with a concealment level …”, “… a concealment level requiring an instruction from a user for the concealment …”, however, it is not clear how to define these claim limitations - it is not clear to define a boundary of the limitations or /components.
Claims 8-10 recite “… to perform control to perform the concealment of an element as the target element … belonging to a section predetermined as a section having similarity to the targe element …”, the predetermined section is predetermined for a type of the input document element …”, “… to cause an image included in the input document element to have a larger section than a section of a character string in the input document element …”, however, it is not clear (1) how to define “a section predetermined as a section having similarity to …”; (2) hot the section is predetermined for an element; (3) whether “the image” and “the character string” are defined as sections or not - it is not clear to define a boundary of the limitations/components.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Numata (US 2020/0302076 A1).
As per claim 1, Numata teaches an information processing system comprising: one or more processors that are implemented with hardware and [see fig. 1 and par. 0063] configured to:
manage a target element and a concealment condition, the target element serving as a concealment target and being included in an input document element of an input document, the concealment condition including at least a condition regarding an output place for outputting an output document in which concealment of the target element is performed [figs. 1, 2, 4; abstract; par. 0021, lines 1-2; par. 0024, lines 1-4; par. 0027, lines 1-7; par. 0028, lines 1-16; par. 0032, lines 1-18 of Numata teaches to manage a target element and a concealment condition (e.g., determining the content element corresponds to a target to be concealed), the target element serving as a concealment target and being included in an input document element of an input document (e.g., the document), the concealment condition including at least a condition regarding an output place (e.g., the screen of the UI unit showing to a user or a document manager) for outputting an output document (e.g., releasing the document, etc.) in which concealment of the target element is performed];
as a compact prosecution, par. 0050 of Numata also teaches the concealment condition (e.g., the defined condition to be concealed or ok to release) including at least a condition regarding an output place (e.g., a person in public office) for outputting an output document (e.g., to be concealed or ok to release) - the teaching of Sarin, US 2017/0337652 A1, describes the image masking based on the location, time, user etc.) and
on a basis of the concealment condition, perform concealment control to perform the concealment of the target element and perform output control to output the output document [figs. 4-6; par. 0029, lines 1-11; par. 0032, lines 1-18; par. 0049, lines 1-18 of Numata teaches on a basis of the concealment condition (e.g., based on the user/manager selection, certainty degree, etc.), perform concealment control (e.g., releasable or un-releasable etc.) to perform the concealment of the target element and perform output control to output the output document (e.g., releasing the document, etc.)].
As per claim 2, Numata teaches the information processing system according to claim 1.
Numata further teaches wherein the one or more processors are configured to: perform control, as the concealment control, to replace the target element with a replacement element having an external appearance different from an external appearance of the target element [figs. 4-6, 9; par. 0058, lines 1-10 of Numata teaches to perform control, as the concealment control, to replace the target element with a replacement element (e.g., the black-out image) having an external appearance different from an external appearance of the target element (e.g., the concealment target)].
As per claim 3, Numata teaches the information processing system according to claim 2.
Numata further teaches wherein the replacement element is predetermined for the target element and for a type of the target element [par. 0030, lines 1-18; par. 0031, lines 1-9; par. 0058, lines 1-10; par. 0062, lines 1-14 of Numata teaches wherein the replacement element (e.g., the black-out image or deleted) is predetermined for the target element and for a type of the target element (e.g., the concealment type)].
As per claim 4, Numata teaches the information processing system according to claim 2.
Numata further teaches wherein the one or more processors are configured to: perform control to output information indicating correspondence of a character string and an image that each serve as the target element to a character string and an image that each serve as the replacement element [fig. 6; par. 0055, lines 1-5; par. 0056, lines 1-16 of Numata teaches to perform control to output information indicating correspondence of a character string (e.g., the character information) and an image (e.g., the image of face) that each serve as the target element to a character string and an image that each serve as the replacement element].
As per claim 5, Numata teaches the information processing system according to claim 1.
Numata further teaches wherein the one or more processors are configured to: decide, as the condition regarding the output place, whether to perform the concealment and a degree of the concealment, on a basis of an installation place of an image output device that outputs the output document [fig. 4; par. 0031, lines 1-9; par. 0032, lines 1-18; par. 0048, lines 1-28; par. 0049, lines 1-18 of Numata teaches to decide, as the condition (e.g., the information presented on the UI) regarding the output place, whether to perform the concealment and a degree of the concealment (e.g., the certainty degree of the content element for the concealment), on a basis of an installation place of an image output device (e.g., the terminal of the document manager) that outputs the output document (e.g., presenting the document result)].
As per claim 6, Numata teaches the information processing system according to claim 5.
Numata further teaches wherein the one or more processors are configured to:
manage the installation place of the image output device in association with a concealment level indicating whether to perform the concealment and the degree; and on a basis of the concealment level, decide whether to perform the concealment and the degree [fig. 4; par. 0030, lines 1-18; par. 0031, lines 1-9; par. 0032, lines 1-18; par. 0048, lines 1-28; par. 0049, lines 1-18 of Numata teaches to manage the installation place of the image output device (e.g., the terminal of the document manager) in association with a concealment level (e.g., a high-level or low-level concealment type) indicating whether to perform the concealment and the degree (e.g., the certainty degree); and on a basis of the concealment level, decide whether to perform the concealment and the degree (e.g., the certainty degree)].
As per claim 7, Numata teaches the information processing system according to claim 6.
Numata further teaches wherein the concealment level includes, as the degree of the concealment, a concealment level requiring an instruction from a user for the concealment and a concealment level not requiring the instruction from the user for the concealment [figs. 4-6, 9; par. 0030, lines 1-18 of Numata teaches wherein the concealment level (e.g., a high-level or low-level concealment type) includes, as the degree of the concealment, a concealment level (e.g., a low-level concealment type) requiring an instruction from a user for the concealment (e.g., which requires the predetermined threshold value for the concealment) and a concealment level (e.g., a high-level concealment type) not requiring the instruction from the user for the concealment (e.g., determining un-releasable when the partial structure includes even at least one content element of a high level concealment type)].
As per claim 8, Numata teaches the information processing system according to claim 1.
Numata further teaches wherein the one or more processors are configured to: perform control to perform the concealment of an element as the target element, the element being included in the input document element and belonging to a section predetermined as a section having similarity to the target element [par. 0023, lines 1-17 of Numata teaches to perform control to perform the concealment of an element as the target element, the element being included in the input document element (e.g., the partial structures are components that constitute the document) and belonging to a section predetermined as a section having similarity to the target element (e.g., the section level)].
As per claim 9, Numata teaches the information processing system according to claim 8.
Numata further teaches wherein the predetermined section is predetermined for a type of the input document element [par. 0022, lines 1-6; par. 0023, lines 1-17 of Numata teaches wherein the predetermined section (e.g., the logical structure such as chapter, clause, section, etc.) is predetermined for a type of the input document element (e.g., the type of element of the document).
As per claim 10, Numata teaches the information processing system according to claim 9.
Numata further teaches wherein the predetermined section is predetermined to cause an image included in the input document element to have a larger section than a section of a character string in the input document element [par. 0022, lines 1-6; par. 0023, lines 1-17; par. 0026, lines 22-27 of Numata teaches wherein the predetermined section is predetermined to cause an image included in the input document element to have a larger section (e.g., the content of the partial structure is the image) than a section of a character string in the input document element (e.g., the type of the content element is the character string)].
Claim 11 is an apparatus claim that corresponds to the system claim 1, and is analyzed and rejected accordingly.
Claim 12 is a medium claim that corresponds to the system claim 1, and is analyzed and rejected accordingly.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAUNG T LWIN whose telephone number is (571)270-7845. The examiner can normally be reached Monday - Friday 10:00 am - 6:00 pm.
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/MAUNG T LWIN/Primary Examiner, Art Unit 2495