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 .
Status of Claims
Claims 1-8, 10, and 12-22 were previously pending and subject to a non-final rejection dated February 25, 2026. In Response, submitted May 19, 2026, claims 1, 12, and 17 were amended. Therefore, claims 1-8, 10, and 12-22 are currently pending and subject to the following final rejection.
Response to Arguments
Applicant’s remarks on Pages 2-9 of the Response, regarding the previous rejection of the claims under 35 U.S.C. 101, have been fully considered and are not found persuasive.
On Pages 2-4 of the Response, Applicant argues, “Applicant respectfully submits that the amended claims do not recite a judicial exception. The Examiner has alleged that the independent claims are directed to ‘tracking the printing and distribution of documents’ and grouped the claims within Methods of Organizing Human Activity. Specifically, the Examiner alleges that the claims constitute commercial interactions. Applicant respectfully submits the classification of the independent claims constituting a commercial interaction is improper. … Claim 1 of the present application cannot be so reduced. The amended claim does not recite any ‘agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations’. Rather, Claim 1 recites a specific data-encoding, storage, and dissemination architecture in which an embedding software application converts document lifecycle information into a standardized format by embedding metadata within a text layer of a digital document using a visually-undetectable font color that matches a background color of the document at a location previously communicated to a third-party computing system, aggregates the digital document with the embedded metadata in the standardized format in a SQL database accessible over a network; generate, based on receiving the one or more communications and using the updated version of the search key data string, a status assessment identifying status of the physical printing and the distribution of the one or more physical documents performed by the third-party computing system; indexes, automatically, information associated with the one or more digital documents to an index table of the SQL database, the indexing updating the index table as the information is received from the third-party computing system to track the information associated with the one or more digital documents; and initiates application of an indication, in physical print format, of the status assessment of the one or more physical documents. There is no pre-computer analog to embedding machine-readable metadata in a document's text layer using a background-matched font color at pre-negotiated coordinates for automated cross-system lifecycle reconciliation. No step of the amended claim describes a commercial transaction, a legal obligation, or a financial practice; the claim instead describes a technological protocol for encoding, propagating, and reconciling document lifecycle state across heterogeneous computing systems which is a problem that did not exist before the computing environment the claims address and that has no counterpart in human commercial activity. The Examiner's characterization of the claims as directed to ‘tracking the printing and distribution of documents’ improperly abstracts the claims to their perceived purpose while ignoring the specific technical means by which that purpose is achieved. As the August 2025 memorandum instructs, examiners must "draw a distinction between a claim that 'recites' an abstract idea (and thus requires further eligibility analysis) and one that merely involves, or is based on, an abstract idea." The amended claims do not recite a commercial interaction; at most, they involve the broader context of document distribution. The claims themselves set forth a steganographic encoding-and-reconciliation protocol and accordingly fall outside the ‘commercial or legal interactions’ sub-grouping of methods of organizing human activity.”
Examiner notes, the claims are properly categorized as a “certain method of organizing human activity” as they describe the business relationships involved in tracking the status of documents (such as physical mailpieces) as they flow through processes between enterprises, intermediary entities, and distributors as explicitly disclosed in specification paragraphs 2-3 as the “background of the invention”. Specifically, as discussed in the detailed rejection below, “convert[ing] document lifecycle information … embedding metadata within a text layer of a … document using a visually-undetectable font color that matches a background color of the document at a location previously communicated to a third-party …, aggregate[ing] the … document with the embedded metadata …; generat[ing], based on receiving the one or more communications and using the updated version of the search key data string, a status assessment identifying status of the physical printing and the distribution of the one or more physical documents performed by the third-party …; index[ing], automatically, information associated with the one or more … documents to an index table…, the indexing updating the index table as the information is received from the third-party … to track the information associated with the one or more … documents; and initiat[ing] application of an indication, in physical print format, of the status assessment of the one or more physical documents” are recitations of the abstract business processes of the recited business relations. While these abstract ideas, in so far as they are claimed, are recited alongside additional element, the presence of these additional elements do not preclude the claims for reciting an abstract idea at Step 2A Prong One. Therefore, the claims are determined to recite abstract ideas related to the “encoding, propagating, and reconciling document lifecycle state” data, and must proceed in in analysis to determine if additional elements integrate the abstract idea into a practical application or amount to “significantly more”. It is also important to note that certain features upon which applicant relies (i.e., document lifecycle information in a standardized format, and “machine-readable metadata”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner also notes, contrary to the claims of the argument, steganographic protocols, such as invisible ink and cyphers, for encoding and reconciling data within the text layer of documents have existed since long before the advent of computers, which indicates the issues faced in the instant application are not exclusive to the technical computing environment, as non-technical analogs exist.
Examiner finally notes, the summarization of “tracking the printing and distribution of documents” is drawn from the language of specification paragraph 1 stating “This invention relates generally to the field document tracking and reconciliation, and more particularly embodiments of the invention relate to tracking systems for physically printing and distributing print documentation that incorporates visually-undetectable font color” and is meant only to give an overview of the preceding analysis which details the exact claim language reciting the abstract idea in each independent claim. Thus the analysis meets the burden of presenting the prima facie case at Step 2A Prong One.
On Pages 4-7 of the Response, Applicant argues, “Applicant respectfully submits that the additional elements integrate any such exception into a practical application. … The Patent Office's own published Subject Matter Eligibility Example 42, Claim 1, is directly analogous to the Applicant’s Claim 1. … Amended Claim 1 of the present application recites the same structural improvement as Example 42, Claim 1, a specific improvement over prior systems by allowing remote users to share document lifecycle information in real time in a standardized format. Each structural pillar of Example 42's eligible claim has a direct counterpart in amended Claim 1. The first structural pillar of Example 42 is conversion of non-standardized information into a standardized format. … Just as Example 42's content server converts disparate, non-standardized patient inputs into a single standardized format, the embedding software application here converts disparate document lifecycle information into a standardized, machine-readable but visually-hidden metadata format within the document's text layer. This is not a generic data-labeling step; it is a specific encoding technique that standardizes lifecycle state across heterogeneous systems that would otherwise have no common data format. The second structural pillar of Example 42 is event-driven status generation whenever updated information has been stored. … Just as Example 42's content server automatically generates a message whenever updated information is stored, the system here automatically generates a status assessment whenever updated lifecycle communications have been received. This eliminates the same type of problem described in Example 42's background i.e. the need for enterprise personnel to continually and manually monitor document lifecycle status across third-party vendors. The final structural pillar of Example 42 is dissemination of up-to-date information. … Amended Claim 1 recites an analogous dissemination step: ‘initiate application of an indication, in physical print format, of the status assessment of the one or more physical documents.’ This limitation ensures that the automated status assessment is not merely computed and stored, but is affirmatively disseminated in physical print format available to relevant users, exactly as in Example 42.”
Examiner notes, as discussed above, certain features upon which applicant relies (i.e., a standard format, and “machine-readable metadata”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Examiner further notes, Example 42 reaches eligibility not simply because it recites “conversion of non-standardized information into a standardized format”, “event-driven status generation”, and “dissemination of up-to-date information”, but because these were deemed impossible using existing technology. Example 42’s Background section states “records are often stored locally on a computer in a non-standard format selected by whichever hardware or software platform is in use in the medical provider’s local office. … a patient’s medical records … is often-times incomplete since records in separate locations are not timely or readily-shared or cannot be consolidated due to format inconsistencies as well as physicians who are unaware that other physicians are also seeing the patient for varying reasons.” This specific technical problem of not being able to provide updated complete medical records between offices due to technological limitations regarding incompatibility of local office software formatting finds a technical solution in the claimed invention of Example 42, Claim 1 which is detailed further in the Background section. No such technical issue or solution is disclosed in the Applicant’s specification, rather the Specification calls for a solution to the abstract idea of “helping enterprises know the status of the mailpiece” (Para. 4). The “conversion of non-standardized information into a standardized format”, “event-driven status generation”, and “dissemination of up-to-date information” are only relevant for eligibility in the context that they represent an improvement to the technology of electronic patient file sharing that was previously impossible using prior technology. In the instant case, the allegedly analogous limitations “‘convert[ing] document lifecycle information into the embedded metadata’ using ‘a visually-undetectable font color’ that matches the background color of the digital document such that the metadata is hidden from visual detection, with the embedded metadata located ‘at a location on the at least one digital document that was previously communicated to a third-party’”, “generat[ing], based on receiving the one or more communications and using the updated version of the search key data string, a status assessment identifying status of the physical printing and the distribution of the one or more physical documents performed by the third-party”, and “initiat[ing] application of an indication, in physical print format, of the status assessment of the one or more physical documents” are recitations of the abstract idea and unhelpful in bringing the claims to eligibility. Specifically the “initiat[ing] application of an indication, in physical print format, of the status assessment of the one or more physical documents” appears to recite status data to documents being printed outside the scope of the claimed invention, and is thus merely data processing and transmission within the scope of the claimed invention. Additionally, the “third-party computing system” act as merely a tool to perform the abstract ideas of sending and receiving data. Finally, the alleged technical improvement that the invention represents “a specific encoding technique that standardizes lifecycle state across heterogeneous systems that would otherwise have no common data format” is presented only in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), thus the Examiner cannot determine the claims improve the technology (See MPEP 2106.04(d)(1)).Therefore, unlike in Example 42, the instant claims do not provide an improvement to technology that integrates the abstract idea into a practical application.
On Pages 7-8 of the Response, Applicant argues, “The Examiner has characterized the additional elements i.e. the memory, processors, program instructions, network, SQL database, embedding software application, third-party computing system, and automated printing, as either generically "applying" the abstract idea or merely "linking" it to technological fields such as digital media, software, databasing, and printing. Applicant respectfully submits that this characterization cannot be sustained when the amended claim is compared to Example 42's eligible claim. … The claim does not merely recite a network and a database; it recites a specific pipeline. Considered as a whole, the outlined combination constitutes a similar type of specific improvement over prior systems that Example 42 recognized as eligible. … Critically, what was missing from the ineligible Claim 2 (and present in the eligible Claim 1) were: (i) the conversion to a standardized format, (ii) the automatic event-driven status generation of messages whenever updated information was stored/aggregated, and (iii) dissemination of up-to-date information. Applicant’s amended independent claims include all three of these distinguishing factors. Applicant’s amended independent claims thus align structurally with Example 42's eligible Claim 1, not its ineligible Claim 2. … Given that (i) the amended claim recites the same structural improvement architecture that the Patent Office found eligible in Example 42, Claim 1; (ii) the Examiner has acknowledged novelty and non-obviousness; (iii) the specification describes a concrete technological improvement; and (iv) the claim reflects that improvement with specificity, Applicant respectfully submits that this is at minimum a close case in which the preponderance of the evidence does not support a finding of ineligibility”
Examiner notes, as discussed above, Example 42 Claim 1 does not reach eligibility simply because it recited “(i) the conversion to a standardized format, (ii) the automatic event-driven status generation of messages whenever updated information was stored/aggregated, and (iii) dissemination of up-to-date information” but because these limitations reflected the specific technical improvement detailed in the Example’s Specificaiton/Background, therefore absent the specific technical improvement detail of the Background, these limitations are not inherently eligible subject matter.
Examiner further notes, as discussed further in the detail rejection below, the claims are analyzed both individually and as a whole/ordered combination. Both analyses find that the additional elements amount to merely “apply it” or generally linking the abstract idea to a field of use, but do not represent an improvement to technology nor integrate the abstract idea into a practical application.
Examiner finally notes, as discussed above, there are key differences in the claimed invention of Example 42 claim 1 and the instant claims which results in different outcomes of the applied analysis and demonstrating that the instant claims do not demonstrate an analogous technological improvement. Further, “As made clear by the courts, the ‘“novelty” of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.’ Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9).” (See MPEP 2106.05). These aspects do not constitute “a close call”, but rather provide a preponderance of evidence that support a finding of ineligibility.
On Pages 8-9 of the Response, Applicant argues, “Applicant respectfully submits that the claims recite significantly more than a judicial exception. … the Examiner has expressly acknowledged that the claims are novel and non-obvious over the prior art … While novelty and non-obviousness are not dispositive of eligibility, this finding strongly weighs against any conclusion that the claimed combination is ‘well-understood, routine, [or] conventional’, the Examiner himself has confirmed the opposite. … even if a memory, processor, network, SQL database, and embedding software application are individually known, the specific combination of limitations outlined in the independent claims is an unconventional arrangement that addresses the unique problem of cross-system document lifecycle reconciliation through a steganographic encoding-and-dissemination protocol, not a generic "apply it" implementation. For at least the foregoing reasons, Applicant respectfully submits that claims 1-8, 10, and 12-22 are patent eligible under 35 U.S.C. § 101, and withdrawal of the rejection is respectfully requested.”
Examiner notes, the claims are found ineligible because the additional elements amount to merely “apply it” or generally link the abstract idea to a field of use at Step 2B, and do not rely on the test for “well-understood, routine, and conventional” for the rejection of the claims. Therefore, this aspect of the argument is moot.
Examiner further notes, as discussed further in the detailed rejection below, the additional elements such as the memory, processor, and network are used as generic tools to perform the abstract ideas of storing and executing instructions/data, and sending/receiving data; the additional elements of the SQL database and the embedding software application are used to generally link abstract ideas such as storing and aggregating data, and receiving and updating data to the technical fields of databasing and software application. These elements, as well as the others recited within the claims, whether considered individually or as a whole/ordered combination fail to amount to significantly more at Step 2B.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8, 10, and 12-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-8 and 10 are directed to a system (i.e., a machine); claims 12-16 are directed to a computing environment (i.e., a machine); claims 17-22 are directed to a method (i.e., a process). Therefore, claims 1-20 all fall within the one of the four statutory categories of invention.
Step 2A, Prong One
Independent claim 1 substantially recites receiving at least one document, wherein the at least one document comprises embedded metadata comprising a search key data string located within text of the at least one document and converting document lifecycle information into the embedded metadata, the metadata comprising a visually-undetectable font color, the embedded metadata being located at a location on the at least one document that was previously communicated to a third-party;
updating data with the at least one document received;
aggregating a batch of one or more documents that includes the at least one document;
transmitting, at a predefined interval, the batch of one or more documents to the third-party, the batch of one or more documents being transmitted to the third-party for physical printing, the physical printing converting the text into physical text printed on paper, and distribution;
receiving one or more communications from the third-party comprising archived status update information regarding physical printing and distribution of one or more physical documents associated with the at least one document from the batch of one or more documents, wherein the distribution of the one or more physical documents comprises mailing, via a mail courier, the one or more physical documents, the one or more communications comprising the metadata comprising an updated version of the search key data string;
generating, based on receiving the one or more communications and using the updated version of the search key data string, a status assessment identifying status of the physical printing and the distribution of the one or more physical documents performed by the third-party;
indexing, automatically, information associated with the one or more documents to an index table, the indexing updating the index table as the information is received from the third-party to track the information associated with the one or more documents; and
initiating application of an indication, in physical print format, of the status assessment of the one or more physical documents.
Independent claim 12 substantially recites receiving, at a predefined interval from an entity, a batch of one or more documents comprising metadata that comprises a search key data string located within each text of the batch of one or more documents, the metadata comprising a visually-undetectable font color, wherein the metadata is located at a location previously communicated to the computing environment, converting document lifecycle information into the metadata;
archiving, the batch of one or more documents received, wherein the archiving the batch of one or more documents comprises updating data that is also accessible to the entity;
printing one or more copies of at least one document from the batch of one or more documents for distribution;
initiating distribution of the physically printed one or more copies of the batch of one or more documents, the distribution being via a mail courier; and
transmitting one or more communications regarding (a) the physically printed one or more copies and (b) distribution of the physically printed one or more copies, the one or more communications comprising the metadata that comprises an updated version of the search key data string.
Independent claim 17 substantially recites receiving at least one document, wherein the at least one document comprises embedded metadata comprising a search key data string located within text of the at least one document and converting document lifecycle information into the embedded metadata, the metadata comprising a visually-undetectable font color, the embedded metadata being located at a location on the at least one document that was previously communicated to a third-party;
updating data with the at least one document received;
aggregating a batch of one or more documents that includes the at least one document;
transmitting the batch of one or more documents to the third-party, the batch of one or more documents being transmitted to the third-party for physical printing, the physical printing converting the text into physical text printed on paper, and distribution;
receiving one or more communications from the third-party comprising archived status update information regarding physical printing and distribution of one or more physical documents associated with the at least one document from the batch of one or more documents, wherein the distribution of the one or more physical documents comprises mailing, via a mail courier, the one or more physical documents, the one or more communications comprising the metadata comprising an updated version of the search key data string;
generating, based on receiving the one or more communications and using the updated version of the search key data string, a status assessment identifying status of the physical printing and the distribution of the one or more physical documents performed by the third-party;
indexing, automatically, information associated with the one or more documents to an index table, the indexing updating the index table as the information is received from the third-party to track the information associated with the one or more documents; and
initiating application of an indication, in physical print format, of the status assessment of the one or more physical documents.
The limitations stated above are processes/functions that under broadest reasonable interpretation covers “certain methods of organizing human activity” (commercial interactions) of tracking the printing and distribution of documents. Therefore, the claim recites an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. Claims 1, 12, and 17 as a whole amount to: (i) merely invoking generic components as a tool to perform the abstract idea or “apply it” (or an equivalent), and (ii) generally links the use of a judicial exception to a particular technological environment or field of use. The claim recites the additional elements of: (i) a memory (claim 1), (ii) one or more processor (claims 1, 12), (iii) executable program instructions (claims 1, 12), (iv) a network (claims 1, 12, 17), (v) one or more digital documents (claims 1, 12, 17), (vi) digital text (claims 1, 12, 17), (vii) one or more computer-readable storage media (claim 12), (viii) an embedding software application (claim 1, 12, 17), (ix) a SQL database (accessible over the network) (claim 1, 12, 17), (x) a third-party/entity computing system (claim 1, 12, 17), (xi) a computing environment (claim 12), and (xii) physically print, automatically and without involvement by a human agent (claim 12).
The additional elements of (i) a memory, (ii) one or more processor, (iii) executable program instructions, (iv) a network, (vii) one or more computer-readable storage media, (x) a third-party/entity computing system, (xi) a computing environment are recited at a high level of generality (see [0057] of the Applicants PG Publication discussing the memory, the one or more computer-readable storage media, and the third-party/entity computing system, [0061] discussing the one or more processor, [0026] discussing the executable program instructions, [0064] discussing the network, and [0031] discussing the computing environment) such that, when viewed as whole/ordered combination, it amounts to no more than mere instruction to apply the judicial exception using generic computer components or “apply it” (See MPEP 2106.05(f)).
The additional element of (v) one or more digital documents, (vi) digital text, (viii) an embedding software application, (ix) a SQL database (accessible over the network), and (xii) physically print, automatically and without involvement by a human agent are recited at a high level of generality (See [0072] of the Applicant’s PG Publication discussing the one or more digital documents and digital text, and the embedding software application, [0074] discussing the SQL database (accessible over the network), [0055] discussing the physically printing, automatically and without involvement by a human agent) such that when viewed as whole/ordered combination, do no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., digital media, software applications, databasing, and printing technology) (See MPEP 2106.05(h)).
Accordingly, these additional elements, when viewed as a whole/ordered combination [See Figures 1 and 2 showing all the additional (i) a memory, (ii) one or more processor, (iii) executable program instructions, (iv) a network, (v) one or more digital documents, (vi) digital text, (vii) one or more computer-readable storage media, (viii) an embedding software application, (ix) a SQL database (accessible over the network), (x) a third-party/entity computing system, (xi) a computing environment, and (xii) physically print, automatically and without involvement by a human agent in combination], do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional elements amount to no more than: (i) “apply it” (or an equivalent), and (ii) generally link the use of a judicial exception to a particular technological environment or field of use, and are not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) merely invoking the generic components as a tool to perform the abstract idea or “apply it” (See MPEP 2106.05(f)); and (ii) generally linking the use of a judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claims adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, the claims 1, 12, and 17 are ineligible.
Dependent Claims 2, 4, 5, 8, 10, 13-16, 18-20, and 22 merely narrow the previously recited abstract idea limitations. For reasons described above with respect to claims 1, 12, and 17 these judicial exceptions are not meaningfully integrated into a practical application or significantly more than the abstract idea. Thus, claims 2, 4, 5, 8, 10, 13-16, 18-20, and 22 are also ineligible.
Step 2A, Prong Two
Dependent Claim 3 further narrow the previously recited abstract idea limitations. Claim 3 also recites the additional element of an entity's document distribution system, which is recited at a high-level of generality (See [0081] of the Applicants PG Publication disclosing the entity's document distribution system) such that when viewed as whole/ordered combination, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., logistics systems) (See MPEP 2106.05(h)).
Accordingly, the additional elements, when viewed individually and as a whole/ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claims are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional element amounts to no more than: generally linking the use of a judicial exception to a particular technological environment or field of use, and is not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) generally linking the use of a judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional element of an entity's document distribution system does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, claim 3 is ineligible.
Step 2A, Prong Two
Dependent Claim 6 further narrow the previously recited abstract idea limitations. Claim 6 also recites the additional element of a data extraction tool, which is recited at a high-level of generality (See [0081] of the Applicants PG Publication disclosing the data extraction tool) such that when viewed as whole/ordered combination, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., data reading technology) (See MPEP 2106.05(h)).
Accordingly, the additional elements, when viewed individually and as a whole/ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claims are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional element amounts to no more than: generally linking the use of a judicial exception to a particular technological environment or field of use, and is not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) generally linking the use of a judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional element of a data extraction tool does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, claim 6 is ineligible.
Step 2A, Prong Two
Dependent Claims 7 and 21 further narrow the previously recited abstract idea limitations. Claims 7 and 21 also recite the additional element of compressed format, which is recited at a high-level of generality (See [0081] of the Applicants PG Publication disclosing the compressed format) such that when viewed as whole/ordered combination, the additional elements do no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e., digital file formatting) (See MPEP 2106.05(h)).
Accordingly, the additional elements, when viewed individually and as a whole/ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claims are directed to an abstract idea.
Step 2B
As discussed above with respect to Step 2A Prong Two, the additional element amounts to no more than: generally linking the use of a judicial exception to a particular technological environment or field of use, and is not a practical application of the abstract idea. The same analysis applies here in Step 2B, i.e., (i) generally linking the use of a judicial exception to a particular technological environment or field of use (See MPEP 2106.05(h)), does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B.
Therefore, the additional element of compressed format does not integrate the abstract idea into a practical application at Step 2A or provide an inventive concept at Step 2B. Thus, even when viewed as a whole/ordered combination, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. Thus, claims 7 and 21 are ineligible.
Novel and Non-Obvious Over the Prior Art
Claims 1-8, 10, and 12-22 are novel and non-obvious over the prior art; however, these claims are subject to the above rejections.
The closest prior art is U.S. Patent Application No. 2002/0114013 to Hyakutake et al (hereafter Hyakutake). Hyakutake discloses systems and methods for printing and distributing documents involving transmitting digital documents to third-party print entities and tracking progress of the document status via use of a search key data string embedded via an embedding software application, as well as indexing information associated with the documents.
The next closest prior art is Non-Patent Literature “How to add an invisible watermark to pdf documents” by TeX. (hereafter TeX). TeX discloses embedding search key data string within digital text of a digital document using visually-undetectable font colors.
The next closest prior art is U.S. Patent Application No. 2022/0222427 to Mann et al (hereafter Mann). Mann discloses updating SQL database with digital documents and using said database to identify documents.
The next closest prior art is U.S. Patent No. 7,499,907 to Brown et al (hereafter Brown). Brown discloses indexing data in an SQL database.
The next closest prior art is U.S. Patent Application No. 2007/0146777 to Cranitch et al (hereafter Cranitch). Cranitch discloses receiving updates across a network for tracking the status updates of a batch of documents from digital to printing to distribution via mail courier.
The next closest prior art is U.S. Patent Application No. 2013/0152210 to Petrovic et al (hereafter Petrovic). Petrovic discloses embedding metadata in a location that was previously communicated between the parties.
The next closest prior art is U.S. Patent Application No. 2004/0128513 to Wu et al (hereafter Wu). Wu discloses initiating application of status assessment in physical print format.
While the closest prior art above teaches the various aspects of the claimed invention individually, the combination of these references are not obvious in such a way that they would have been obvious to one of ordinary skill in the art at the time of invention. Specifically, Hyakutake in view of TeX and further in view of Mann and even further in view of Cranitch and even further in view of Petrovic and even further in view of Wu does not explicitly disclose transmitting the batch of one or more digital documents to the third-party computing system at a predefined interval and updating the index table by indexing data as it is received from the third-party computing system. Therefore, the claims are rendered novel and non-obvious over the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DAVID G GODBOLD whose telephone number is (571)272-5036. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shannon S Campbell can be reached at 571-272-5587. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID G. GODBOLD/Examiner, Art Unit 3628
/RUPANGINI SINGH/Primary Examiner, Art Unit 3628
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