DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is responsive to the Amendment filed on 6/24/2026. Claims 1-5, 7-11,13, and 15-18 are pending in the case.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 recites: An information processing system comprising: at least one processor configured to:
display an annotation given to a document on a display screen together with partial information specified as a part of a content of the document corresponding to a content of the annotation, and
specify the partial information by executing an analysis of a content of information described in a vicinity of a position to which the annotation is given in the document.
wherein in addition to the analysis, the partial information is specified based on a keyword included in the annotation.
Claim 1 is directed to analyzing text based on keywords and proximity (vicinity) to link an annotation to a specific part of a document. The subject matter as recited in the claim is merely abstract ideas, i.e. Mental Processes- concepts performed in the human mind (including an observation, evaluation). A human being reading a paper document with a highlighter and sticky notes can perform the exact same task. A human can look at an annotation, spot a keyword, look at the nearby paragraphs (the vicinity), and deduce which specific sentence or section the note refers to. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because other additional limitations are also directed to display information on a display screen to generate a result of the analysis (see independent claims 1 and 15-16), which do not amount to significantly more than the abstract idea as indicated above.
The claims do not include an additional element or combination of elements that add specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “processor” and a “display screen”, is a conventional computing equipment and algorithm used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception. The claim uses the processor, display screen, and data analysis as generic tools to automate a conventional data-matching task. This does not change how the display screen operates; it merely changes what information is being shown on it.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to system, CRM, and method use a generic computer to derive a result, and providing the result, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Therefore, the claimed interactions of the various generically recited methods lack an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental processes, e.g., data evaluation and selection.
Dependent claims 2-5, 7-11, 13-14, 17-18 do not add an inventive step to the abstract idea of the independent claims and are therefore rejected based on the rationale discussed in the rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 8,10-11, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donoghue (US 20150154165 A1) in view of Bargeron et al. (US 20040205542 A1, hereinafter Bargeron).
As to independent claim 1, O-Donoghue teaches an information processing system comprising: at least one processor (“a system comprises: a processor” paragraph 0010); configured to:
display an annotation given to a document on a display screen together with partial information specified as a part of a content of the document corresponding to a content of the annotation (“When a user selects either of the two annotation icons, 403 or 404, several selected or all annotations can be displayed in a foreground representation window while the e-book content recedes into the background, e.g., in a grayed-out state.” Paragraph 0039, Fig. 4A; “FIG. 4B illustrates an exemplary annotation display window 410 configured to display an on-screen annotation dialog between an author and the reader community in accordance with an embodiment of the present disclosure. In this example, the window 410 includes a region 411 to display the annotated e-book content and a series of dialog boxes to display the annotations, e.g., 412-415.” Paragraph 0040).
O-Donoghue does not appear to expressly teach specify the partial information by executing an analysis of a content of information described in a vicinity of a position to which the annotation is given in the document,
wherein in addition to the analysis, the partial information is specified based on a keyword included in the annotation.
Bargeron teaches specify the partial information by executing an analysis of a content of information described in a vicinity of a position to which the annotation is given in the document (“an annotation anchor is received (act 222). The keywords from the annotation anchor are identified (act 224), and one of the keywords is selected (act 226). Any one of the keywords can be selected in act 226 (e.g., the first one from a list stored in the annotation anchor, one selected at random, etc.). A candidate annotation region and score corresponding to the selected keyword are then generated based on the location of the keyword (act 228)” paragraph 0037, “the annotation is attached to that region (act 240).” Paragraph 0040 - this implies that the content is analyzed to find a region that matches the keywords from the anchor).
wherein in addition to the analysis, the partial information is specified based on a keyword included in the annotation (“The keywords from the annotation anchor are identified (act 224)” paragraph 0037).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise specify the partial information by executing an analysis of a content of information described in a vicinity of a position to which the annotation is given in the document, wherein in addition to the analysis, the partial information is specified based on a keyword included in the annotation.. One would have been motivated to make such a combination to provide a way to improve the manner in which annotations are associated with portions of documents.
As to dependent claim 8. O’Donoghue teaches the information processing system according to claim 1, O’Donoghue does not appear to expressly teach wherein the content of the information is an image described in the document, and the processor is configured to: specify the partial information such that at least a part of the image is included.
Bargeron teaches wherein the content of the information is an image described in the document, and the processor is configured to: specify the partial information such that at least a part of the image is included (“the annotation is attached to that region (act 240).” Paragraph 0040).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise wherein the content of the information is an image described in the document, and the processor is configured to: specify the partial information such that at least a part of the image is included. One would have been motivated to make such a combination to provide a way to improve the manner in which annotations are associated with portions of documents.
As to dependent claim 10. O’Donoghue teaches the information processing system according to claim 1, wherein the processor is configured to: specify the partial information based on a selection operation of the part of the content of the document by a person who has given the annotation (“the author made an initial annotation 412 on the selected content 411.” Paragraph 0041).
As to dependent claim 11. O’Donoghue teaches the information processing system according to claim 1, O’Donoghue further teaches wherein the processor is configured to: receive a change of the partial information by a person who has given the annotation for the partial information specified based on the content of the annotation (“a user's selection for the sentence 702,” Paragraph 0048, i.e., selecting a portion of the sentence by dragging or moving the selection tool).
Claims 15-16 are substantially the same as claim 1 and are therefore rejected under the same rationale as above.
Claims 2-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donoghue in view of Bargeron et al., and Madan et al. (US 20050091578 A1, hereinafter Madan).
As to dependent claim 2, O-Donoghue teaches the information processing system according to claim 1, O’Donoghue does not appear to expressly teach wherein the processor is configured to: in a case in which a reduction image representing information on the document displayed on the display screen is selected, display the annotation and the partial information in association with the reduction image without opening the document.
Madan teaches wherein the processor is configured to: in a case in which a reduction image representing information on the document displayed on the display screen is selected, display the annotation and the partial information in association with the reduction image without opening the document (“s shown in FIG. 10, by causing the icon representing item 904 to be modified to include a representation 1001 of an attached electronic sticky note. The visual appearance of the representation 1001 may depend upon the content, size, shape, color, and/or other properties of the attached electronic sticky note 300. For example, the representation 1001 may be of the same color as the electronic sticky note 300 (as shown in these figures using hash marks).” Paragraph 0064).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise wherein the processor is configured to: in a case in which a reduction image representing information on the document displayed on the display screen is selected, display the annotation and the partial information in association with the reduction image without opening the document. One would have been motivated to make such a combination to improve user experience.
As to dependent claim 3, O-Donoghue teaches the information processing system according to claim 2, O-Donoghue further teaches wherein the processor is configured to: when a plurality of annotations are given to the document, display the plurality of annotations and the partial information corresponding to the annotations in a list on the display screen(“FIG. 4B illustrates an exemplary annotation display window 410 configured to display an on-screen annotation dialog between an author and the reader community in accordance with an embodiment of the present disclosure. In this example, the window 410 includes a region 411 to display the annotated e-book content and a series of dialog boxes to display the annotations, e.g., 412-415.” Paragraph 0040).
As to dependent claim 4, O-Donoghue teaches the information processing system according to claim 2, O-Donoghue further teaches wherein the processor is configured to: when a plurality of annotations are given to the document, display the plurality of annotations in a list on the display screen (annotation, e.g., 412-415 in Fig. 4B); and when the annotation displayed on the display screen is selected, display the partial information corresponding to the annotation on the display screen (“In response to a user's selection with a new annotation, the corresponding conversation thread can be expanded for display.” Paragraph 0045).
As to dependent claim 5. O-Donoghue teaches the information processing system according to claim 2, O-Donoghue does not appear to expressly teach wherein the processor is configured to: when work information that requires work on the document is acquired from the content of the annotation, display a work instruction item for transitioning from the partial information to a work processing screen on the display screen.
Madan teaches when work information that requires work on the document is acquired from the content of the annotation, display a work instruction item for transitioning from the partial information to a work processing screen on the display screen (“Another example is where the attachment of the electronic sticky note 300 to an action item in a task list may cause a reminder to be generated depending upon when the task is due, wherein the reminder may include some or all of the content of the electronic sticky note 300.” Paragraph 0067).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise wherein the processor is configured to: when work information that requires work on the document is acquired from the content of the annotation, display a work instruction item for transitioning from the partial information to a work processing screen on the display screen. One would have been motivated to make such a combination to improve user experience.
As to dependent claim 7. O’Donoghue teaches the information processing system according to claim 1, O’Donoghue does not appear to expressly teach wherein a range of the partial information differs according to an attribute of the annotation.
Madan teaches wherein a range of the partial information differs according to an attribute of the annotation (“The visual appearance of the representation 1001 may depend upon the content, size, shape, color, and/or other properties of the attached electronic sticky note 300.” Paragraph 0064).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise wherein a range of the partial information differs according to an attribute of the annotation. One would have been motivated to make such a combination to improve user experience.
Claims 9 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over O’Donoghue in view of Bargeron et al., and Fink et al. (US 20160124927 A1, hereinafter Fink).
As to dependent claim 9, O’Donoghue teaches the information processing system according to claim 1, O’Donoghue does not appear to expressly teach wherein the content of the information includes text information described in the document, and the processor is configured to: execute the analysis by a natural language analysis to specify the partial information such that the text information includes a specific meaning content.
Fink teaches execute the analysis by a natural language analysis to specify the partial information such that the text information includes a specific meaning content (“The UIMA framework processes the unstructured text at a number of stages using various NLP techniques, e.g., ascertaining meanings of relevant words in the text,” paragraph 0026).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise execute the analysis by a natural language analysis to specify the partial information such that the text information includes a specific meaning content. One would have been motivated to make such a combination for making meaningful use of the information provided by the document.
As to dependent claim 13. O’Donoghue teaches the information processing system according to claim 11, O’Donoghue does not appear to expressly teach wherein the processor is configured to: when the change of the partial information is received from the person who has given the annotation, present a candidate for a range of the partial information according to the content of the annotation.
Fink teaches present a candidate for a range of the partial information according to the content of the annotation (“The web browser 106 renders the web content and the generated annotations to be presented to a user. Illustratively, terms related to diabetes are marked with boxes 420 in the web page 401 presented by the web browser 400.” Paragraph 0031).
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective date of the claimed invention to modify the system of O’Donoghue to comprise wherein the processor is configured to: when the change of the partial information is received from the person who has given the annotation, present a candidate for a range of the partial information according to the content of the annotation. One would have been motivated to make such a combination for making meaningful use of the information provided by the document.
Allowable Subject Matter
Claims 17-18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Friend et al. US 20120035925 Population of list and tasks as an sticky note, and displays the list items, such as tasks, events, activities for reminding the user.
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 MAHELET SHIBEROU whose telephone number is (571)270-7493. The examiner can normally be reached Monday-Friday 9:00 AM-5:00 PM Eastern Time.
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, Kieu Vu can be reached at 571-272-4057. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MAHELET SHIBEROU/Primary Examiner, Art Unit 2171
Prosecution Insights