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 .
This office action is in response to the amendment filed on 1 June 2026 and the Information Disclosure Statement filed on 9 April 2026.
This office action is made Final.
Claims 1-2, 8-9,15-16 have been amended.
The objection to the specification/abstract and all art rejections as disclosed in the previous office action have been withdrawn as neccessited by the filed amendment. The 101 rejection of claims 15-20 directed to non-statutory subject matter as disclosed in the previous office action have been withdrawn by the persuasiveness of Applicant’s arguments.
Claims 1-20 are pending. Claims 1, 8, and 15 are independent claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/9/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The amendment to the specification and abstract has been entered and accepted.
Drawings
The replacement drawings filed on 6/1/26 have been entered and accepted. However, the drawings remain objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters “1000” and “1001” have been used to designate “computer” (see FIG 10 with 1000 pointing to box encompassing “computer”) Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-5, 7, 10-12, 14 and 17-19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “the paper” in lines 2-3. However, claim 1 already introduced a “a paper” in the integrating step and the “generated paper” in the 2nd processing limitation. It is unclear to the Examiner if the element(s)/term(s) “paper” in of claim 3 should depend on the “an author of a paper” in the integrating step of claim 1, the “”generated paper” of claim 1 or viewed as its own element(s). Therefore, the claim is vague and indefinite. For examining purposes, the Examiner will view claim 3 as “he method further comprising: analyzing format styles of content including title, authors, abstract, background, problem discussion, experiment, discussion, conclusion, and reference list in the paper by the author, wherein the paper by the author is processed for editing or submitting the paper by the author”
Claims 4-5, 7, 10-12, 14 and 17-19 recite similar limitation(s) with similar issue(s) and are rejected under similar rationale.
Claim 4 recites the limitation “identifying a current format style in the paper”. However, Claim 1 already introduced the element “current format style” in the 2nd determining step. It is unclear to the Examiner if the element(s)/term(s) “current format style” of claim 4 should depend on the “current format style of the paper” in the determining step of claim 1, or viewed as its own element(s). Therefore, the claim is vague and indefinite. For examining purposes, the Examiner will view claim 4 as “identifying a current format style in the paper”
Claims 11 and 18 recite similar limitation(s) with similar issue(s) and are rejected under similar rationale.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1
Step 2A, Prong 1:
The limitation of “integrating the monitored contextual information from the client computer of human- computer interactions (HCI) of an author of a paper related to preparation of the paper into a data structure” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, other than reciting for “client computer” and “data structure”, nothing in the claim element precludes the step “integrating” from practically being performed in the mind and/or performed by a human with a pen and paper but for generic computer components. For example, but for “client computer” and “data structure””, “integrating” in the context of this claim encompasses the user recording/taking notes of the observed interactions on paper with a pen.
Similarly, the limitation of “processing the contextual information data structure to determine a selected format style” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, but for “contextual information data structure”, “determine” in the context of this claim encompasses the user able to identify what format is used by looking at the information.
Similarly, the limitation of “determining whether a current format style of the paper in in compliance with the selected format style” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, but for “contextual information data structure”, “determining” in the context of this claim encompasses the user able to identify is the two format style match.
Similarly, the limitation of “generating a data changes data structure showing data changes in real time for a plurality of sections of the paper” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, but for “data changes data structure”, “generating” in the context of this claim encompasses the user writing down a table containing the current data on paper.
Similarly, the limitation of “indicating, for each of the plurality of sections of the paper, the selected format style, the current format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, “indicating” in the context of this claim encompasses the user pointing out particular data on paper using a pen, such as underlining on the paper.
Similarly, the limitation of “processing the data changes data structure to convert a format of the sections of the paper the compliance status indicates not in compliance to be in compliance with the selected format style to produce a generated paper” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, “convert” in the context of this claim encompasses the user rewrite the presentation of data on paper differently than how it was presented before.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A, Prong 2:
This judicial exception is not integrated into a practical application. In particular, the claim recites these additional elements:
uploading the generated paper is to a page upload storage that stores the generated paper for the publication.
The “uploading” limitation is merely post-solution steps of transmitting data recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). The store limitation is a mere nominal or tangential addition to the claim recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering, storing data and/or transmitting data, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering or transmitting data. See MPEP 2106.05. The page upload storage in the limitations is claimed at a high level of generality such that the page upload storage is used as tool to perform the generic computer function of uploading or storing data. See MPEP 2106.05(f).
In addition, the claim recites these other additional elements – client computer, contextual information data structure, data changes data structure, and page upload storage to perform the integrating, determine, generating, indicating, convert, uploading, and/or stores steps. The client computer, contextual information data structure, data changes data structure, and page upload storage in the steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of the integrating, determine, generating, indicating, convert, uploading, and/or stores functionality) such that it amounts no more than mere instructions to apply the exception using a generic component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The “uploading” limitation is recited at a high level of generality. These elements amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity(e.g. buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014)). See MPEP 2106.05(d), subsection II. The “stores” limitation is recited at a high level of generality. This element amounts to storing and retrieving information in memory are well-understood, routine, conventional activity (Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93). See MPEP 2106.05(d), subsection II.
The use of a page upload storage in the uploaded/stores step(s) amounts to no more than mere instructions to apply the exception using a generic computer component. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception (use of a page upload storage) and insignificant extra-solution activity, which do not provide an inventive concept.
In addition, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the client computer, contextual information data structure, data changes data structure, and page upload storage to perform the integrating, determine, generating, indicating, convert, uploading, and/or stores steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Claim 8
Claim 8 recites the corresponding system of the method of claim 1 wherein the system of Claim 8 contains similar subject matter/limitations and elements of the
method of Claim 1. Therefore, the corresponding system of Claim 8 is rejected under similar rationale found in the rejection of the method of Claim 1.
Furthermore, Claim 8 has the following additional elements: processor and memory. In regards to the processor and memory:
Step 2A, Prong 2:
In addition, the claim recites these other additional elements – processor, memory, computing environment, data structure, formatting application, and page upload storage to perform the monitoring, integrating, generating, uploaded, and/or stores steps. The computing environment, data structure, formatting application, and page upload storage in the steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of monitoring, integrating, generating, uploaded, and/or stores functionality) such that it amounts no more than mere instructions to apply the exception using a generic component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B:
In addition, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the processor, memory, computing environment, data structure, formatting application, and page upload storage to perform the monitoring, integrating, generating, uploaded, and/or stores steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Claim 15
Claim 15 recites the corresponding product/medium of the method of claim 1 wherein the product/medium of Claim 15 contains similar subject matter/limitations and (additional) elements of the method of claim 1. Therefore, the corresponding product/medium of Claim 15 is rejected under similar rationale found in the rejection of the method of claim 1.
Dependent Claims 2-7, 9-14, 16-20
As per dependent claim 2, the limitation “…determining the selected format styles according to user selection.” is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for generic computer components but for the recitation of generic computer components. That is, “selecting” in the context of this claim encompasses the user manually making a choice when given a list of options to pick from.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per dependent claim 3, the limitation “analyzing format styles...” is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for generic computer components but for the recitation of generic computer components. That is, “analyzing” in the context of this claim encompasses the user manually user evaluate/reviewing the formatting styles currently present.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per dependent claim 4, the limitation “identify a current format style...” is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for generic computer components but for the recitation of generic computer components. That is, “identify” in the context of this claim encompasses the user manually user determine the formatting style currently presented.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per dependent claim 5, the limitation “validating if the current format style...” is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for generic computer components but for the recitation of generic computer components. That is, “validating” in the context of this claim encompasses the user manually user determine if the current format style is selected.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per dependent claim 6, the limitation “recommending a proper formatting style...” is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for generic computer components but for the recitation of generic computer components. That is, “recommending” in the context of this claim encompasses the user manually picking a formatting style from a list that the user believes will correct the error.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per dependent claim 7, the limitation(s) “provide a client application” encompasses insignificant extra-solution activity. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As noted above, providing data has been found by the courts to be well understood, routine, and conventional functionality (See e.g. buySAFE, Inc. v. Google, Inc.). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
As per dependent claims 9-14, Claims 9-14 recites the corresponding system form of the method form of claims 2-7 wherein the system of Claims 9-14 contains similar subject matter/limitations and (additional) elements of the method of claims 2-7. Therefore, the corresponding system of Claims 9-14 is rejected under similar rationale found in the rejection of the method of claims 2-7.
As per dependent claims 16-20, Claims 16-20 recites the corresponding product/medium form of the method form of claims 2-7 wherein the product/medium of Claims 16-20 contains similar subject matter/limitations and (additional) elements of the method of claims 2-7. Therefore, the corresponding product/medium of Claims 16-20 is rejected under similar rationale found in the rejection of the method of claims 2-7.
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.
Claim(s) 1-4, 8-11, 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Gururajan et al (US20170220545, 2017) in further view of Nair et et al (US20220129123, 2022) in further view of Wang et al (US20090158134, 2009)
As per independent claim 1, Gururajan et al discloses a method implemented in a server in communication with a client computer (0029, 0107) comprising:
integrating monitored contextual information from the client computer of human- computer interactions (HCI) of an author of a paper related to preparation of the paper into a contextual information data structure ((Note: the term “contextual information data structure” is not defined by the claim language and the specification does not provide an explicit definition of what of the term “contextual information data structure” is/means. Therefore, BRI is applied) 0036, 0041-0043,0049: scans and indexes contents and formatting properties based on user inputs authoring document(s); thus, monitoring contextual information from the client computer of human- computer interactions (HCI) of an author of a paper related to preparation of the paper. Furthermore, Abstract, 0008, 0031, 0045, 0084 discloses generates a template via a system/application based on the scanned/indexed contents and formatting properties based on user inputs that authored documents; thus, integrating monitored contextual information into a contextual information data structure)
processing the contextual information data structure to determine a selected format style (0045, 0049: formatting style identified from analyzing/identifying; 0087 discloses the user inputting new formatting)
…produce a generated paper; uploading the generated paper to a page upload storage that stores the generated paper for publication (0085-0087: new document formatted based on the generate template is generated. The new document is saved in a database that is remote. (0032) Furthermore, the Examiner notes that the phrase "for publication" is interpreted as an intended result , rather than limiting the limitation of 'uploading'. An intended result (in this case for publishing) does not provide any weight in the claim See MPEP 2111.04. Furthermore, it noted that one of a skilled artisan in the art would have realized that stored documents can be retrieved and used at any time from other users for viewing and/or printing purposes by (form of stored documents for publication))
Furthermore, Gururajan discloses a current format style (identifying a current format style in the paper (0085, 0087); however, the cited art fails to specifically disclose determining whether a current format style of the paper in in compliance with the selected format style; generating a data changes data structure showing data changes in real time for a plurality of sections of the paper, and indicating, for each of the plurality of sections of the paper, the selected format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style; and processing the data changes data structure to convert a format of the sections of the paper the compliance status indicates not in compliance to be in compliance with the selected format style to produce a generated paper. However, Nair et al discloses determining whether a current format style of the paper in in compliance with the selected format style; (0025, 0071, 0073, 0075, 0079, 0083: discloses comparing the formatting styles of the inputted document with the indicated formatting styles of the selected accessibility guidelines. In order to compare the formatting styles of the document with the formatting styles required in the accessibility guidelines, one of a skilled artisan would have realized that styles disclosed in the guidelines had to be identified prior to comparing. Thus, Nair also discloses processing the contextual information data structure to determine a selected format style.) Furthermore, Nair et al discloses generating a data changes data structure showing data changes in real time for a plurality of sections of the paper, and indicating, for each of the plurality of sections of the paper, the selected format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style; ((Note: the term “data changes data structure” is not defined by the claim language and the specification does not provide an explicit definition of what of the term “data changes data structure” is/means.) FIG 4D-E: discloses an output of a data structure that lists different sections of the document that are in violation of accessibility guidelines. FIG 4D-E clearly lists the identified sections of the document whose current formatting style do not comply with the provided accessibility guidelines and provides the selected formatting styles to replace the identified portions with the incorrect formatting styles. FIG 4D-E shows the section of the paper/document that has a violation, the correct format style available, and its compliance status of not being in compliance. FIG 4E, 4G; 0096-0101, 0106, 0109 provides the ability for the user to correct the current formatting style of a section in violation to be the selected formatted style indicated by the accessibility guidelines so that the section is in compliance. Nair et al displays recommend fixes in order to overcome the violations and enable the sections to match the format styles set by the selected accessibility guidelines. Once the identified violations are corrected, the data structure is updated removing the listed violations indicating the compliance status of the sections of the document with formatting styles that were in violation have been corrected (FIG 4G, 4H). This is a form of showing data changes in real time for sections of the paper) Furthermore, Nair et al discloses processing the data changes data structure to convert a format of the sections of the paper the compliance status indicates not in compliance to be in compliance with the selected format style to produce a generated paper (0085, 0096-0102, 0104, 0110; FIG 4E: Nair et al displays recommend fixes in order to overcome the violations and enable the elements match the format styles set by the selected accessibility guidelines. Furthermore, FIG 4E shows 434a that when selected the system automatically changes the current formatting style of the sections in violation to the formatting styles of the accessibility guidelines or the user can select “click here” to automatically fix each violation by using the recommended fix.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to have modified the cited art with the disclosed cited features of Nair et al since it would have provided the benefit of the developer does not need to painstakingly go through the entire code to correct the violations with a sufficient understanding of the accessibility guidelines—rather, the system internalizes the guideline complexities and corrects violations, thereby making the accessibility compliance tasks a relatively easy one. (0122)
However, the cited art fails to specifically disclose indicating for each of the plurality of sections of the paper, the selected format style, the current format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style. However, Wang et al discloses indicating, for each of the plurality of sections of the paper, the selected format style, the current format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style (FIG 7a-e; 0038-0040: Visually shows an error status (e.g. not in compliance) indicating a section of the document using the incorrect format style along with what the format style should be (form of selected format style). For example, FIG 7a shows that a section of the document not in compliance since it has current font size of 8pt and that it should be 10pt. Wang allows the user to correct the format style error that converts the incorrect style to the correct style. When the correct format style has been applied, the compliance status is updated (see FIG 7e; 0040))
It would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention to have modified the cited art with the disclosed cited features of Nair et al since it would have provided the intrinsic advantage of a more efficient, effective method of enforcing design constraints and guidelines to ensure your content is perceivable, operable, and understandable for people with disabilities.
As per dependent claim 2, Gururajan et al discloses wherein the determining the selected format style comprises determining the selected format style according to user selection. (0087 discloses the user inputting new formatting which is applied as the select format style; See also 0072-0073 of Nair)
As per dependent claim 3, Claim 3 is directed to analyzing formatting styles of content elements., Gururajan et al describes analyzing at least a title and author element for their formatting styles. (0042: discloses identifying the author element (who wrote the document/paper) and identifying the formatting applied to the author element (right justification, double spacing) across multiple documents. 0043 discloses identifying a title heading that has the same formatting style across multiple documents.) Thus, Gururajan et al discloses/support analyzing multiple elements, such as a title and author element, for their formatting styles. The Examiner states the additional elements listed in the claims i.e. title, authors, abstract, background, problem discussion, experiment, discussion, conclusion, and reference list in the paper, are nominally recited and the claims do not distinguish how each of these elements are analyzed for their formatting style
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Gururajan et al’s ability to analyze a particular type of formatting style, such that a plurality of formatting styles are also recognized, as also taught by Gururajan et al’s (it is noted that the claim recites the following listing of plurality of formatting styles title, authors, abstract, background, problem discussion, experiment, discussion, conclusion, and reference list in the paper, of which each of them are only different in name, and thus ,functionally, this combination supports additional formatting styles that only differ in name, rather than function)). This would have provided the benefit of saving time and steps in creating documents from scratch or in reworking existing documents, thus reducing the amount of user input and the computing device processing power needed to process the user input. (0031)
Furthermore, the differences (name/label of each element) in the claim are only found in the nonfunctional descriptive material and do not have any functionality. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). Therefore, it would have been obvious to a person of ordinary skill before the effective filing date of Applicant’s invention to include analyzing different names/labels of the elements in the document for their assigned formatting because such data having any functionality as claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention. See also MPEP 2161.01 which states “USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035 ; In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004).” See also MPEP 2111.05, particularly section III.
In addition, Gururajan et al discloses the paper is processed for editing (0085-0086: filling in content after the new document is generated).
As per dependent claim 4, based on the 112b rejection and interpretation incorporated, Gururajan et al discloses identifying the current format style in the paper. (0085: formatting properties already selected; thus, identified).However, the cited art fails to specifically disclose the current format style is different from the selected format style. However, based on the rejection of Claim 1 and the rationale incorporated, Nair et al discloses identifying the current format style in the paper (0025, 0071, 0073, 0075, 0079, 0083)
As per independent claims 8 and 15, Claims 8 and 15recite similar limitations as in Claim 1 and are rejected under similar rationale. Furthermore, Gururajan et al discloses a processor, memory, and a medium (FIG 8)
As per dependent claims 9-11, 16-18, Claims 9-11, 16-18 recite similar limitations as in Claims 2-4 and are rejected under similar rationale.
Claim(s) 5-6, 12-13, 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Gururajan et al in further view of Nair et al in further view of Wang et al in further view of Qureshi et al (US20140229481, 2014)
As per dependent claim 5, based on the rejection of Claim 1 and the rationale, along with the motivation incorporated, as explained above, Nair et al discloses if the current format style of the document matches the (selected) format style of the accessibility guidelines. If the current format styles do not match/meet the format styles of the accessibility guidelines, violations are determined and displayed to the user to be corrected. Thus, Nair et al discloses a form of validating by making the document’s current format styles being in compliance with selected format styles. However, the cited art fails to especially disclose validating if the current format style of the paper is in compliance with selected format styles by comparing predicted format styles and identified format styles.
However, Qureshi et al discloses a verification report that identifies the current format styles required for a provided document to be submitted. (FIG 16; 0120 The verification report indicates whether or not the document meets the assigned formatting requirements by visual icons of meeting a formatting requirement or failing to meet a formatting requirement. (FIG. 16, 0120, 0122) One of a skilled artisan would have realized that in order to create and display a verification report such as Qureshi et al, that the document had to be analyzed and compared to the provided format requirements beforehand in order to determine the current applied formatting styles of the document meet the formatting requirements, a form of validating. FIG 16 discloses the verification report indicates that current document has used the correct font type, font size, and line spacing. Therefore, Qu discloses validating if the current formatting style is in compliance with the formatting requirement by comparing predicted format styles and identified format styles.
It would have been obvious to one of ordinary skill before the effective filing date of Applicant’s invention to have modified the cited art with the cited feature(s) of Qureshi et al since it would have provided the benefit of allowing the student to correct any mistakes noted on the report prior to submission (0122)
As per dependent claim 6, based on the rejection of Claim 1 and the rationale, along with the motivation, incorporated, as explained above, Nair et al discloses if the current format style of the document matches the (selected) format style of the accessibility guidelines. If the current format styles do not match/meet the format styles of the accessibility guidelines, violations are determined and displayed to the user to be corrected. In response, Nair et al displays recommend fixes in order to overcome the violations and enable the elements match the format styles set by the selected accessibility guidelines, a form of providing recommended proper formatting styles. (FIG 4E; 0096-0101) However, the cited art fails to specifically disclose recommending a proper formatting style for correcting any invalid format styles including paper structure, layout, line space, font type and size, citation format, and reference orders. However, FIG 16 and 0120 of Qureshi et al discloses that if the formatting of the document, a user wishes to submit, has the correct font type setting (san serif), has the correct font size setting (12), and has the correct line spacing setting (double). FIG 16 discloses if the document has either satisfied the formatting requirements by either visually showing a check mark icon (yes for satisfying) or with a X icon (no/error for not satisfying) next to each requirement. One of a skilled artisan would have realized that if the document was not typed in san serif, then “Font: san serif” would had a “X” icon indicating it did not satisfy this particular requirement. In addition, one of a skilled artisan would have realized that if the document was not typed with a font size of 12 , then “Font size 12” also would had a “X” icon indicating it did not satisfy this particular requirement. In addition, FIG. 16 visually indicates each of the particular formatting requirement needs to be satisfied for the document prior to be submitted. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of Applicant’s invention that Qureshi et al discloses provides visual recommendations of proper formatting styles for correcting invalid format styles, that includes line space, font type and size through the use of check marks and “X” marks. This would have provided the intrinsic advantage of the user writing the document a visual guide on helping and improving their document to meet the necessary requirements
Thus, Qureshi et al et al discloses the support of recommending multiple formatting styles, for correcting invalid formatting styles, such as font type and size and line spacing. The Examiner states the additional elements listed in the claims i.e. paper structure, layout, line space, font type and size, citation format, and reference orders are nominally recited and the claims do not distinguish how each of these elements are analyzed for their formatting style
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Qureshi et al’s ability to recommend a particular type of formatting style, such that a plurality of formatting styles are also recommended, as also taught by Qureshi et al’s (it is noted that the claim recites the following listing of plurality of formatting styles, paper structure, layout, line space, font type and size, citation format, and reference orders, of which each of them are only different in name, and thus, functionally, this combination supports additional formatting styles that only differ in name, rather than function). This would have provided the benefit of maximizing effectiveness in helping users to improve their writing skills. (0106)
Furthermore, the differences (name/label of each formatting style) in the claim are only found in the nonfunctional descriptive material and do not have any functionality. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994). Therefore, it would have been obvious to a person of ordinary skill before the effective filing date of Applicant’s invention to include recommending different names/labels of formatting styles for correcting any invalid formatting styles because such data having any functionality as claimed and because the subjective interpretation of the data does not patentably distinguish the claimed invention. See also MPEP 2161.01 which states “USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035 ; In re Ngai, 367 F.3d 1336, 70 USPQ2d 1862 (Fed. Cir. 2004).” See also MPEP 2111.05, particularly section III.
As per dependent claims 12-13, 19-20, Claims 12-13, 19-20 recite similar limitations as in Claims 5-6 and are rejected under similar rationale.
Claim(s) 7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Gururajan et al in further view of Nair et al in further view of Wang et al in further view of Chilakamarri et al (US 20180033322, 2018)
As per dependent claim 7, Gururajan et al discloses a server application that reformats the paper. (0032,0078) . In addition, the server interacts with a client (0029, 0107). Furthermore, based on the rejection of Claim 1 and the rationale, along with the motivation, incorporated, Nair discloses a server is used to verify conformance of digital content to accessibility guidelines, and correct possible violations of the accessibility guidelines (0050, 0056) Thus, the server is used to reformat the document to another format (i.e. correct the current format style to the format style indicated within the accessibility guidelines. In addition, the server interacts with a client (FIG. 2; 0006). However, the cited art fails to specifically disclose providing a client application as a plug-in to a word processing application, wherein the client application interacts with a server application. However, Chilakamarri et al discloses a user may access the research server when using a word processing application with a research plug-in or browser extension running on a user device. (0021,0032) For example, 0047 discloses the user, using their user device, using the plugin of the word processing application to access stored selections of the user stored on the server (see also FIG. 1; 0013, 0048)
It would have been obvious to one of ordinary skill before the effective filing date of Applicant’s invention to have modified the cited art with the cited feature(s) of Chilakamarri et al since it would have provided the benefit of enabling users to search for and be served relevant content quicker (0011)
As per dependent claim 14, Claim 14 recites similar limitations as in Claim 7 and is rejected under similar rationale.
Response to Arguments
Applicant's arguments filed 6/1/26 have been fully considered but they are not persuasive.
On pages 12-13, in regards to the drawings objection, the Examiner respectfully states the amendment to the specification and the replacement drawings overcame most of the drawing issues that were presented in the previous office action. However, the amendment did the overcome the issues with reference characters “1000” and “1001” have been used to designate “computer” (see FIG 10 with 1000 pointing to box encompassing “computer”). In response to applicant’s arguments, the arrow associated with “1000” is not pointing to the computing environment overall, but only pointing to the box associated with “1001” designated as a computer. FIG 10 shows the box associated with “1001” only covers half of the figure and does not include elements with characters “1003”, “1004, “1005”...etc. Reference character “1000” in FIG. 10 does not show the arrow is pointing or encapsulating elements/character in addition to “1001”, such as “1003”, “1004, “1005”.... Thus, because “1000” is only pointing to the box associated with “1001” and no other elements as shown in FIG. 10, reference characters “1000” and “1001” have been used to designate “computer”. Thus, the drawing objection remains. The Examiner recommends removing the arrow associated with “1000” and underlining “1000” in FIG. 10 instead to show that “1000” is associated with all the elements of FIG. 10.
On pages 13-18, in regards to the 101 rejection directed to an abstract idea without significantly more, Applicant argues that the amended limitations “generating a data changes data structure showing data changes in real time for a plurality of sections of the paper, and indicating, for each of the plurality of sections of the paper, the selected format style, the current format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style; processing the data changes data structure to convert a format of the sections of the paper the compliance status indicates not in compliance to be in compliance with the selected format style to produce a generated paper” comply with 35 USC 101 since the claims provide "a specific type of data structure" in the claimed "data changes data structure" that is designed to improve the technological process to reformat a paper to a selected formatting style. Furthermore, the Applicant states the limitation “integrating monitored contextual information from the client computer of human- computer interactions (HCI) of an author of a paper related to preparation of the paper ” comply with 35 USC 101 since the claimed contextual information data structure provides a further improvement to computer technology for formatting documents by allowing human-computer interaction of the author related to the preparation of the paper to be used to select the format style for the paper and improve the overall efficiency of academic publishing but also enhance the chances of successful submissions . Thus, Applicant states the claim, considered as a whole, integrated the mental process into a practical application that amounted to a technical improvement. Therefore, Applicant argues the 35 USC 101 rejection should be withdrawn. However, the Examiner disagrees.
First, in regards to the argued limitations as stated above, The Examiner respectfully states that the Applicant’s claim 1 does not result in integrating the claimed abstract into a practical application being performed, as explained in Step 2A, Prong One and Two. In regards to Step 2A, Prong One. As explained above, the claims fall into one of the three groupings of subject matter, mathematical concepts, organizing human activity, or mental process. In regards to explicitly argued subject matter, the Examiner explained that the limitation “integrating the monitored contextual information from the client computer of human- computer interactions (HCI) of an author of a paper related to preparation of the paper into a data structure” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, other than reciting for “client computer” and “data structure”, nothing in the claim element precludes the step “integrating” from practically being performed in the mind and/or performed by a human with a pen and paper but for generic computer components. For example, but for “client computer” and “data structure””, “integrating” in the context of this claim encompasses the user recording/taking notes of the observed interactions on paper with a pen.
In addition, the examiner explained the limitation “generating a data changes data structure showing data changes in real time for a plurality of sections of the paper” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, but for “data changes data structure”, “generating” in the context of this claim encompasses the user writing down a table containing the current data on paper.
In addition, the examiner explained the limitation “indicating, for each of the plurality of sections of the paper, the selected format style, the current format style, and a compliance status indicating if the current format style for a section is not in compliance with the selected format style” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, “indicating” in the context of this claim encompasses the user pointing out particular data on paper using a pen, such as underlining on the paper.
Furthermore, the examiner explained the limitation “processing the data changes data structure to convert a format of the sections of the paper the compliance status indicates not in compliance to be in compliance with the selected format style to produce a generated paper” as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and/or performed by a human with a pen and paper but for generic computer components. That is, “convert” in the context of this claim encompasses the user rewrite the presentation of data on paper differently than how it was presented before.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or performed by a human with a pen and paper but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Furthermore, in regards to Step 2A, Prong Two regarding the argued limitations only, the Examiner states the argued claim limitations recites these other additional elements – client computer, contextual information data structure, and data changes data structure to perform the integrating, generating, indicating, and/or convert steps. The client computer, contextual information data structure and data changes data structure in the steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of the integrating, generating, indicating, and/or convert functionality) such that it amounts no more than mere instructions to apply the exception using a generic component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
In response, in regards to improvement of a technological field, the Examiner respectfully states MPEP 2106.05(a) states “An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome”. McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259, 113 USPQ2d at 1107. In addition, MPEP 2106.05(a)(II) states “To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology”.
The Examiner respectfully states the applicant fails to identify that the claims and
the limitations themselves at issue are directed toward overcoming a problem within the
technology. In addition, the Examiner respectfully states the claims themselves provide no evidence of an improvement in computer- related technology beyond the abstract
idea, and the computer hardware cited/claimed (i.e. client computer, contextual information data structure, and data changes data structure) is merely used as a tool to implement the abstract idea as opposed to claiming the process specifically designed to achieve an improved technological result. Thus, the claims are merely claiming the idea of a solution or outcome. Furthermore, while the Applicant states that the present invention provides the effect of “provide "a specific type of data structure" in the claimed "data changes data structure" that is designed to improve the technological process to reformat a paper to a selected formatting style; provides a further improvement to computer technology for formatting documents by allowing human-computer interaction of the author related to the preparation of the paper to be used to select the format style for the paper; improve the overall efficiency of academic publishing but also enhance the chances of successful submissions”, the Examiner states these statement(s) are merely conclusionary statements that provide no evidence/reasoning to counter the Examiner’s reasoning/rationale on how the claims or elements within the claims provide significantly more than the judicial exception.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of a using client computer, contextual information data structure, and data changes data structure to perform integrating, generating, indicating, and/or convert steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The MPEP 2105.06(a) states “However, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.” Thus, the additional elements of Applicant’s claims are merely improving the abstract idea and not an improvement in technology.
Applicant’s arguments, see pages 18-19, filed 6/1/26, with respect to “claims 15-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter” have been fully considered and are persuasive. The 101 rejection of Claim 15-20 directed to non-statutory subject matter has been withdrawn.
Applicant’s arguments, in regards to the art rejections, with respect to claims 1-20 have been considered but are moot because the arguments do not apply to the new ground(s) of rejection(s) since the new ground(s) of rejection(s) was necessitated by Applicant's amendment.
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.
If the Applicant chooses to amend the claims in future filings, the Examiner kindly states any new limitation(s) added to the claims must be described in the specification in such a way as to reasonably convey to one skilled in the relevant art in order to meet the written description requirement of 35 USC 112, first paragraph. To help expedite prosecution, promote compact prosecution and prevent a possible 112(a)/first paragraph rejection, the Examiner respectfully requests for each new limitation added to the claims in a future filing by the Applicant that the Applicant would cite the location within the specification showing support for that new limitation within the remarks. In addition, MPEP 2163.04(I)(B) states that a prima facie under 112(a)/first paragraph may be established if a claim has been added or amended, the support for the added limitation is not apparent, and applicant has not pointed out where added the limitation is supported.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID FABER whose telephone number is (571)272-2751. The examiner can normally be reached Monday - Thursday.
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, Adam Queler can be reached at 5712724140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADAM M QUELER/ Supervisory Patent Examiner, Art Unit 2172
/D.F/ Examiner, Art Unit 2172
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