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 .
Claims 15-32 and 34 have been examined. Claims 1-14 are cancelled by preliminary amendment filed on 5/10/23.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/19/25 has been entered.
Response to Arguments
Regarding double patenting rejection, the rejection is maintained in light of the Amendment filed on 11/19/25. Specifically, the amended claims recite steps that encompass same or similar scope as related patent, which focus on the general concept of generating marker and search terms to identify document locations.
Regarding 35 U.S.C. 102/103 rejections, Applicant’s arguments with respect to claims 15-32 and 34 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.
Regarding 35 U.S.C. 101 rejection, the rejection is withdrawn in light of Amendment filed on 11/19/25.
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 15-32 and 34 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,120,129 and claims 1-21 of U.S. Patent No. 11,693,960. Although the claims at issue are not identical, they are not patentably distinct from each other because present application and related patents all disclose, in essence, receiving basic marker and generate search term to locate one or more documents on the network. Although the present recite slightly different limitations, but they all demonstrates the concept of generating marker to locate and identify copies of the document using search engine. See comparison of exemplary claims.
Instant Application
U.S. Patent No. 11,120,129
21. A method of obtaining one or more locations of copies of a document on a computer network based on at least one property of the document, the method comprising:
generating at least one marker representing the at least one common document property;
generating one or more search terms using the at least one marker;
using a search engine to search the computer network using the one or more search terms to obtain one or more search results;
identifying, from among the one or more search results, at least one document having the at least one document property and a respective at least one identified location on the computer network;
selecting, using at least one identified location, content, and/or property of the at least one identified document, at least one action to apply to a network entity; and
applying the at least one action to the network entity, wherein the at least one action comprises configuring the network entity to restrict transfer of data between the network entity and the at least one identified location.
1. A method of obtaining a location of a document on a computer network based on at least one document property, the method comprising:
receiving at least one basic marker and at least one encoding function associated with the document property;
generating one or more search terms according to the at least one encoding function, based on the at least one basic marker;
providing the one or more search terms to at least one search engine and obtaining therefrom one or more search results corresponding to the one or more search terms, wherein each search result comprises one or more references to locations of documents on the computer network;
discovering at least one document having the at least one document property from the one or more search results and obtaining a respective discovered location of the document on the computer network;
performing at least one rule-based action, according to at least one document property of the discovered document; and
classifying the at least one discovered document according to at least one of: the at least one document property, a data element pertaining to content of the document and an obtained location on the computer network, wherein performing at least one rule-based action comprises:
selecting at least one rule-based action according to the classification of at least one discovered document; and applying the selected action on a respective network entity, wherein at least one rule-based action is selected from a list consisting at least one of:
producing a notification message to the network entity and configuring the network entity to restrict transfer of data between network entity and the discovered location.
Instant Application
U.S. Patent No. 11,693,960
21. A method of obtaining one or more locations of copies of a document on a computer network based on at least one property of the document, the method comprising:
generating at least one marker representing the at least one common document property;
generating one or more search terms using the at least one marker;
using a search engine to search the computer network using the one or more search terms to obtain one or more search results;
identifying, from among the one or more search results, at least one document having the at least one document property and a respective at least one identified location on the computer network;
selecting, using at least one identified location, content, and/or property of the at least one identified document, at least one action to apply to a network entity; and
applying the at least one action to the network entity, wherein the at least one action comprises configuring the network entity to restrict transfer of data between the network entity and the at least one identified location.
1. A method for detecting leaked documents, the method comprising:
using at least one processor to perform: generating one or more search terms using at least one basic marker and at least one encoding function associated with at least one document property of a document;
providing the one or more search terms to at least one search engine and obtaining therefrom one or more search results corresponding to the one or more search terms, wherein the one or more search results include one or more references to locations of documents on a computer network;
identifying, from among the one or more search results and using at least one decoding function associated with the at least one encoding function, at least one document having the at least one document property and a respective at least one identified location on the computer network;
classifying the at least one identified document, based on the at least one identified location, content, and/or property of the at least one identified document, to obtain a respective at least one classification of the at least one identified document;
selecting at least one action according to the at least one classification of the at least one identified document; and
applying the at least one action on a network entity, wherein the at least one action comprises generating a notification message to the network entity and/or configuring the network entity to restrict transfer of data between the network entity and the at least one identified location.
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.
Claims 15-32 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Rodriguez et al. U.S. 2009/0012944 (hereinafter Rodriguez) in view of Bronson et al. U.S. 10,817,592 (hereinafter Bronson).
As per claim 15, 21 and 34, Rodriguez discloses a system/method/memory for obtaining one or more locations of copies of a document on a computer network based on at least one property of the document (Rodriguez: [0010]: report location of tracked media content, including documents), the system comprising a non-transitory memory storing executable code; and at least one processor that, upon executing the executable code, is configured to perform:
generating at least one marker representing the at least one document property (Rodriguez: [0041]; [0126]: watermark/encoded marker is embedded on content, the watermark is based on keyword or information/marker);
generating one or more search terms using the at least one marker (Rodriguez: [0125]-[0127]: search terms are derived from keyword or information);
using a search engine to search the computer network using the one or more search terms to obtain one or more search results (Rodriguez: [0126]: search tool receives the watermark identifier);
identifying, from among the one or more search results, at least one document having the at least one document property and a respective at least one identified location on the computer network (Rodriguez: [0052]: the watermark-based keywords are searchable by search engines; [0126]-[0127]: mark some or all of the content using the identifier);
applying the at least one action to a network entity, wherein the at least one action comprises generating a notification message to the network entity (Rodriguez: [0031]-[0032]: report to central server or directly to content owner based on identified content).
Rodriguez does not explicitly disclose selecting, using at least one identified location, content, and/or property of the at least one identified document and configuring the network entity to restrict transfer of data between the network entity and the at least one identified location. However, Brock discloses monitoring distribution of digital content file to detect media piracy and select action to be applied based on policy associated with the media content (Bronson: col. 6 line 63 - col. 7 line 32: content tracking network module operates as DHCP system or browser application extension to identify suspicious users and prevent pirated users from accessing additional content using blacklist, whitelist or greylist; Figs. 2-4 and col. 1 line 65 – col. 2 line 20: content tracking system maintains whitelist, blacklist or greylist of websites that distribute contents). It would have been obvious to one having ordinary skill in the art to restrict transfer of information between identified location/blacklist site and user device when violation/unauthorized usage of copyrighted content is detected by browser extension because Bronson and Rodriguez are analogous art involving searching public network for copyrighted content. The motivation to combine would be to deter further distribution of copyrighted content.
As per claim 16 and 22, Rodriguez as modified discloses the limitations according to claims 15 and 21 respectively. Rodriguez further discloses receive one or more basic markers; receive an encoding function associated with the at least one document property; produce an encoded marker based on the one or more basic markers according to the encoding function; and mark the document with the encoded marker (Rodriguez [0125]-[0127]: various encoding functions may be used, including receiving some keywords or information/basic marker to produce watermark identifier/encoded marker for generating watermark content based on specific encoding function).
As per claim 17, Rodriguez as modified discloses the limitations of claim 16. Rodriguez further discloses wherein the encoding function comprises at least one obfuscation element (Rodriguez: [0007]: function of digital watermark is to embed codes that is imperceptible or nearly imperceptible to the user; [0025]: embedding digital watermarks).
As per claim 18, Rodriguez as modified discloses the limitations of claim 15. Rodriguez further discloses generating the one or more search terms using the at least one marker comprises: producing one or more search terms based on at least one markers and according to a decoding function (Rodriguez: [0127]: different identifiers can be generated based on the same basic identifier, i.e. Disneyland, to retrieve different search results).
As per claim 19 and 24, Rodriguez as modified discloses the limitations of claims 15 and 21 respectively. Rodriguez further discloses wherein the at least one action to apply to the network entity comprises a rule-based action (Rodriguez: [0029]-[0032]: search for watermarked content and report content location to central server or the content owner for enforcement actions).
As per claim 20 and 25, Rodriguez as modified discloses the limitations according to claims 15 and 21 respectively. Rodriguez further discloses wherein generating the at least one marker representing the at least one document property comprises applying an encoding function associated with the document property (Rodriguez: [0125]-[0127]: embed watermark identifier associated with common document property for indexing, and search content with common property based on the identifier, e.g. some or all pictures taken at Disneyland).
As per claim 23 and 30, Rodriguez as modified discloses the limitations of claims 21 and 15 respectively. Rodriguez further discloses wherein generating the one or more search terms using the at least one marker comprises: producing the one or more search terms based on the at least one marker and according to a decoding function (Rodriguez: [0125]-[0127]).
As per claim 26 and 29, Rodriguez as modified discloses the method of claims 21 and 15 respectively. Rodriguez further discloses wherein the at least one document property comprises a property selected from the group consisting of: a subject of the document, a title of the document, an owner of the document, a pertinence of the document, and a level of secrecy associated with the document (Rodriguez: [0030]-[0032]; [0125]-[0127]).
As per claim 27, Rodriguez as modified discloses the method of claim 21. Rodriguez further discloses wherein the identifying the at least one document comprises: retrieving one or more documents according to the at least one identified location, and applying the at least one decoding function to the one or more retrieved documents to identify the at least one document having the at least one document property (Rodriguez: [0030]: finding and decoding watermarked content).
As per claim 28 and 31, Rodriguez as modified discloses the limitations of claims 21 and 15 respectively. Rodriguez does not explicitly disclose wherein the selecting the at least one action comprises: classifying, using a machine-learning (ML) based classifier model, the at least one identified document based on the at least one identified location, content, and/or property of the at least one identified document on the computer network, and selecting, based on the classification of the at least one identified document, the at least one action to apply to the network entity. However, classifying content based on ML classifier is well known in the art (e.g. determining media type).
As per claim 32, Rodriguez as modified discloses the limitations of claim 15. Rodriguez as modified teaches or at least suggests wherein the at least one action comprises generating a notification message to the network entity or configuring the network entity to restrict transfer of data between the network entity and the at least one identified location (Rodriguez: [0031]-[0032]; [0041]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIN HON (ERIC) CHEN whose telephone number is (571)272-3789. The examiner can normally be reached Monday to Thursday 9am- 7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lynn Feild can be reached at 571-272-2092. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIN-HON (ERIC) CHEN/Primary Examiner, Art Unit 2431