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 .
Amendment filed on 03/27/2026 has been entered. Claims 1, and 3-21 are pending. Claim 2 has been canceled without prejudice. Claims 1 and 3-20 have been amended. Claim 21 is newly added.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,681,863 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-6 of U.S. Patent No. 11,681,863 B2 teaches every limitations of claim 1 of the application 18/314,522.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-7 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Farrell, US Patent Application Publication No. US 2019/0087409 A1, in view of Collins et al. (Collins), US Patent Application Publication No. US 2016/0055196 A1 (Collins is from IDS filed on 05/09/2023), and further in view of Sakamoto et al. (Sakamoto), US Patent Application Publication No. US 2018/0018378 A1.
As to independent claim 1, Farrell discloses a method comprising:
obtaining a first document and a second document, wherein the first document is in a first format comprising a hypertext markup language (HTML) structure and the second document is in a second format comprising the HTML structure (paragraphs [0035]-[0036]: receiving document 1 includes of the following text: “A construction permit for a multi-family dwelling”, and document 2 includes of the following text: “a licensed contractor was given a construction permit for multiple-family dwellings. It was a new licensed contractor”, and these documents are stored on server or cloud storage; paragraph [0040]: documents can be in portable document format or hypertext markup language);
processing the first document to generate a first processed document, the processing comprising:
converting the first document from the first format to a third format, removing content from the first document in the third format, the third format comprising a tree data structure having a plurality of first nodes, and converting the content removed back to the first format (paragraph [0040]: utilizing documents in other formats, e.g., portable document format or hypertext markup language. For documents in other formats, the visual-based document comparison program may utilize known external software applications to convert the document to a format that can be processed by the visual-based document comparison program; paragraph [0041]: linguistic units, e.g., content words and phrases, are extracted from each of the received document);
processing the second document to generate a second processed document by converting the second document from the second format to the fourth format, removing content from the second document in the fourth format, and converting the second document with the content removed back to the second format (paragraph [0040]: utilizing documents in other formats, e.g., portable document format or hypertext markup language. For documents in other formats, the visual-based document comparison program may utilize known external software applications to convert the document to a format that can be processed by the visual-based document comparison program; paragraph [0041]: linguistic units, e.g., content words and phrases, are extracted from each of the received document);
tokenizing the first document and the second document (paragraph [0041]: extract linguistic units (content words and phrases) from each received documents by utilizing a known tokenizer);
identifying one or more first content items of the first processed document that are not included in the second processed document (paragraphs [0080]-[0086]: identifying linguistic units such as content words/phrases that are the same in the documents, and linguistic units such as content words/phrases that are not the same in the documents);
identifying one or more second content items of the second processed document that are not included in the first processed document (paragraphs [0080]-[0086]: identifying linguistic units such as content words/phrases that are the same in the documents, and linguistic units such as content words/phrases that are not the same in the documents); and
displaying, in a user interface of a display device, the first document and highlighting that indicates the one or more first content items (paragraphs [0080]-[0086]: document 1 and document 2 are displayed and highlighted the differences); and
displaying, in the user interface of the display device, the second document and highlighting that indicates the one or more second content items (paragraphs [0080]-[0086]: document 1 and document 2 are displayed and highlighted the differences).
Farrell, however, does not disclose the second document being a revised version of the first document, recursively traversing the tree data structure to identify at least one first node from the plurality of first nodes, the at least one first node corresponds to removable content.
In the same field of endeavor, Collins discloses providing a “diff” of two documents, wherein a diff is a document or other record with information allowing for the construction, display, and/or recording of differences between a first document and a second document, wherein the diff will indicate changes that have occurred from the first document to the second document, wherein the first document can be “original document” and the second document can be “new document” (paragraph [0006]). Collins further discloses the diff can correspond to a new document inf the same format as the first document and second document (for example, the diff, first document, and second document can be rich text format files) (paragraph [0007]). Collins further discloses can be represented as a diff data structure, which comprises a plurality of data elements, each data element is either an equal data element, containing content which is the same in each document (i.e. content corresponding to matching text) or a DelIns data elements, containing content which has been removed form the first document and/or content that has been added to the second document (i.e. content corresponding to non-matching text (paragraph [0014]). Collins further discloses a family of two or more documents, wherein the documents of the family include the property of being modified versions of one another (paragraph [0015]). Collins discloses representing the structure of a formatted document as a tree (paragraph [0165]), file formats that have property such as apply styles to leaf elements, wherein this property holds true for HTML, in which in HTML, using tag to apply a style (paragraphs [0166], [0168], [0177]). Collins further discloses deriving the plain texts of each document by taking the text of each leaf of the tree in sequential order, i.e., extracting the text (paragraph [0171], marking up the text as go with a “delete”, “insert’ or “equal” <span> tag (paragraphs [0177] [0180]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system of Farrell, to include the second document being a revised version of the first document, recursively traversing the tree data structure to identify at least one first node from the plurality of first nodes, the at least one first node corresponds to removable content, as taught by Collins since both Farrell and Collins are analogous art for the purpose of indicating changes that have occurred from the first document to the second document (Collins, paragraph [0006]).
Farrell and Collins, however, do not disclose wherein the tokenization includes identifying HTML tags from the first processed document and the second processed document and generating a token for each identified HTML tag.
In addition, Sakamoto discloses a token string configured with an HTML tag name (paragraph [0049]). Sakamoto further discloses a token string is created, focusing on the structure of the HTML document, for example, the variable elements are removed, and a string is created by considering each of the HTML tag name as one token (paragraph [0060].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the systems of Farrell and Collins to include wherein the tokenization includes identifying HTML tags from the first processed document and the second processed document and generating a token for each identified HTML tag, as taught by Kakamoto for extracting text inside a tag easily.
As to dependent claim 2, Farrell and Collins disclose wherein the third format is a tree data structure comprising a plurality of first nodes, and wherein processing the first document to generate the first processed document comprises removing at least one first node from the plurality of first nodes (Farrell, paragraphs [0049]-[0050]; Collins, paragraph [0014]).
As to dependent claim 3, Farrell and Collins disclose wherein the fourth format is a tree data structure comprising a plurality of second nodes, and wherein processing the second document to generate the second processed document comprises removing at least one second node from the plurality of second nodes (Farrell, paragraphs [0049]-[0050]; Collins, paragraph [0014]).
As to dependent claim 4, Farrell discloses wherein processing the first document to generate the first processed document further comprises lemmatizing tokens of the first document (paragraphs [0048]-[0050]).
As to dependent claim 5, Farrell discloses wherein identifying one or more first content items of the first processed document that are not included in the second processed document comprising comparing a set of lemmatized tokens for the first processed document to a set of lemmatized tokens for the second processed document (paragraphs [0048]-[0050]).
As to dependent claim 6, Farrell discloses wherein processing the second document to generate the second processed document further comprises lemmatizing tokens of the second document (paragraphs [0048]-[0050]).
As to dependent claim 7, Farrell discloses wherein identifying one or more second content items of the second processed document that are not included in the first processed document comprises comparing a set of lemmatized tokens for the second processed document to a set of lemmatized tokens for the first processed document (paragraphs [0048]-[0050]).
As to dependent claim 20, Farrell, however, does not disclose the second document being a revised version of the first document.
In the same field of endeavor, Collins discloses providing a “diff” of two documents, wherein a diff is a document or other record with information allowing for the construction, display, and/or recording of differences between a first document and a second document, wherein the diff will indicate changes that have occurred from the first document to the second document, wherein the first document can be “original document” and the second document can be “new document” (paragraph [0006]). Collins further discloses the diff can correspond to a new document inf the same format as the first document and second document (for example, the diff, first document, and second document can be rich text format files) (paragraph [0007]). Collins further discloses can be represented as a diff data structure, which comprises a plurality of data elements, each data element is either an equal data element, containing content which is the same in each document (i.e. content corresponding to matching text) or a DelIns data elements, containing content which has been removed form the first document and/or content that has been added to the second document (i.e. content corresponding to non-matching text (paragraph [0014]). Collins further discloses a family of two or more documents, wherein the documents of the family include the property of being modified versions of one another (paragraph [0015]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system of Farrell, to include the second document being a revised version of the first document, as taught by Collins since both Farrell and Collins are analogous art for the purpose of indicating changes that have occurred from the first document to the second document (Collins, paragraph [0006]).
As to claim 21, Farrell, however, does not teach recursively traversing the tree data structure to identify the at least one second node corresponding to the removable content.
In the same field of endeavor, Collins discloses providing a “diff” of two documents, wherein a diff is a document or other record with information allowing for the construction, display, and/or recording of differences between a first document and a second document, wherein the diff will indicate changes that have occurred from the first document to the second document, wherein the first document can be “original document” and the second document can be “new document” (paragraph [0006]). Collins further discloses the diff can correspond to a new document inf the same format as the first document and second document (for example, the diff, first document, and second document can be rich text format files) (paragraph [0007]). Collins further discloses can be represented as a diff data structure, which comprises a plurality of data elements, each data element is either an equal data element, containing content which is the same in each document (i.e. content corresponding to matching text) or a DelIns data elements, containing content which has been removed form the first document and/or content that has been added to the second document (i.e. content corresponding to non-matching text (paragraph [0014]). Collins further discloses a family of two or more documents, wherein the documents of the family include the property of being modified versions of one another (paragraph [0015]). Collins discloses representing the structure of a formatted document as a tree (paragraph [0165]), file formats that have property such as apply styles to leaf elements, wherein this property holds true for HTML, in which in HTML, using tag to apply a style (paragraphs [0166], [0168], [0177]). Collins further discloses deriving the plain texts of each document by taking the text of each leaf of the tree in sequential order, i.e., extracting the text (paragraph [0171], marking up the text as go with a “delete”, “insert’ or “equal” <span> tag (paragraphs [0177] [0180]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system of Farrell, to include recursively traversing the tree data structure to identify the at least one second node corresponding to the removable content, as taught by Collins since both Farrell and Collins are analogous art for the purpose of indicating changes that have occurred from the first document to the second document (Collins, paragraph [0006]).
Claims 8-19 are r rejected under 35 U.S.C. 103 as being unpatentable over Farrell, US Patent Application Publication No. US 2019/0087409 A1, and further in view of Sakamoto et al. (Sakamoto), US Patent Application Publication No. US 2018/0018378 A1.
As to independent claim 8, Farrell discloses a system comprising:
a processing system (paragraph [0092]: operating system 914); and
one or more computer readable storage media storing instructions which, when executed by the processing system, cause the processing system to perform a method comprising (paragraph [0092]: one or more computer-readable tangible storage devices, and software program 108, the visual-based document comparison programs may be stored on one or more computer-readable tangible storage devices for execution by one or mor processors):
obtaining a first document and a second document from a database, the first document comprising a first set of content items and the second document comprising a
second set of content items, wherein the first document and the second document is in a hypertext markup language (HTML) format (paragraphs [0035]-[0036]: receiving document 1 includes of the following text: “A construction permit for a multi-family dwelling”, and document 2 includes of the following text: “a licensed contractor was given a construction permit for multiple-family dwellings. It was a new licensed contractor”, and these documents are stored on server or cloud storage; paragraph [0040]: documents can be in portable document format or hypertext markup language);
processing the first document to generate a first processed document, wherein the first processed document comprises a first set of processed content items, wherein a number of content items in the first set of processed content items is less than a number of content items in the first set of content items (paragraph [0041]: the linguistic units (e.g., content words and phrases) from each of the received documents are extracted by utilizing a known tokenizer; paragraphs [0053]-[0054] and Table 1: document 1 (or d1) contains linguistic units “construction permit” and “multiple family dwelling”, and these linguistic units are less than the whole document 1 “A construction permit for a multi-family dwelling”, while document 2 (or d2) contains linguistic units contains linguistic units “construction permit”, “multiple family dwelling” and “licensed contractor”, and these linguistic units are less than the whole document 2 “A licensed contractor was given a construction permit for multiple-family dwellings. It was a new licensed contractor”);
processing the second document to generate a second processed document, wherein the second processed document comprises a second set of processed content items, wherein a number of content items in the second set of processed content items is less than a number of content items in the second set of content items (paragraph [0041]: the linguistic units (e.g., content words and phrases) from each of the received documents are extracted by utilizing a known tokenizer; paragraphs [0053]-[0054] and Table 1: document 1 (or d1) contains linguistic units “construction permit” and “multiple family dwelling”, and these linguistic units are less than the whole document 1 “A construction permit for a multi-family dwelling”, while document 2 (or d2) contains linguistic units contains linguistic units “construction permit”, “multiple family dwelling” and “licensed contractor”, and these linguistic units are less than the whole document 2 “A licensed contractor was given a construction permit for multiple-family dwellings. It was a new licensed contractor”);
identifying a first portion of the first processed document that is different from the second processed document (paragraphs [0080]-[0086]: identifying linguistic units such as content words/phrases that are the same in the documents, and linguistic units such as content words/phrases that are not the same in the documents);
identifying a second portion of the second processed document that is different from the first processed document; and
displaying, in a user interface of a display device, the first processed document, an indicator that indicates the first portion (paragraphs [0080]-[0086]: document 1 and document 2 are displayed and highlighted the differences); and
displaying, in the user interface of the display device, the second processed document and an indicator that indicates the second portion paragraphs [0080]-[0086]: document 1 and document 2 are displayed and highlighted the differences).
Farrell, however, does not disclose wherein the tokenization includes identifying HTML tags from the first processed document and the second processed document and generating a token for each identified HTML tag.
In addition, Sakamoto discloses a token string configured with an HTML tag name (paragraph [0049]). Sakamoto further discloses a token string is created, focusing on the structure of the HTML document, for example, the variable elements are removed, and a string is created by considering each of the HTML tag name as one token (paragraph [0060].
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system of Farrell to include wherein the tokenization includes identifying HTML tags from the first processed document and the second processed document and generating a token for each identified HTML tag, as taught by Kakamoto for extracting text inside a tag easily.
As to dependent claim 9, Farrell discloses wherein processing the first document to generate a first processed document comprises transforming data representing the first document into a first data structure comprising a plurality of first nodes and removing at least one first node from the plurality of first nodes (Farrell, paragraphs [0049]-[0050]).
As to dependent claim 10, Farrell discloses wherein processing the second document to generate a second processed document comprises transforming data representing the second document into a second data structure comprising a plurality of second nodes and removing at least one second node from the plurality of second nodes (Farrell, paragraphs [0049]-[0050].
As to dependent claim 11, Farrell discloses wherein processing the first document to generate a first processed document further comprises lemmatizing words of the first document (paragraphs [0048]-[0050]).
As to dependent claim 12, Farrell discloses wherein processing the second document to generate a second processed document further comprises lemmatizing words of the second document (paragraphs [0048]-[0050]).
As to dependent claim 13, Farrell discloses wherein processing the first document to generate a first processed document further comprises removing at least one stop word from words of the first document (paragraphs [0053]-[0054]).
As to dependent claim 14, Farrell discloses wherein processing the second document to generate a second processed document further comprises removing at least one stop word from words of the second document (paragraphs [0053]-[0054]).
Claims 15-19 are medium claims that contain similar limitations of claims 8-12, respectively. Therefore, claims 15-19 are rejected under the same rationale.
Response to Arguments
Applicant’s arguments and amendments filed on 10-17-2003 have been fully considered but they are not deemed fully persuasive. Applicant’s arguments with respect to claims 1, 3-21 have been considered but are moot in view of the new ground(s) of rejection as explained here below, necessitated by Applicant’s substantial amendment (i.e., the tokenization includes identifying HTML tags from the first processed document and the second processed document and generating a token for each identified HTML tag) to the claims which significantly affected the scope thereof. Please see the rejection above with newly cited prior art Sakamoto.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37CFR 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 extension fee 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 CHAU T NGUYEN whose telephone number is (571)272-4092. The examiner can normally be reached on Monday-Friday from 8am to 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Cesar Paula, can be reached at telephone number 5712724128. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHAU T NGUYEN/Primary Examiner, Art Unit 2145
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