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 .
Priority
This application makes reference to or appears to claim subject matter disclosed in Application No. 16/886,265, yet fails to further refer back to the predecessor applications of 16/886,265, namely, PCT/TR2018/050742 filed November 28, 2018 and US 62/591,750 filed November 28, 2017. If applicant desires to claim the benefit of a prior-filed application under 35 U.S.C. § 119(e), 120, 121, 365(c) or 386(c), the instant application must contain, or be amended to contain, a specific reference to the prior-filed application in compliance with 37 C.F.R. § 1.78. If the application was filed before September 16, 2012, the specific reference must be included in the first sentence(s) of the specification following the title or in an application data sheet (ADS) in compliance with pre-AIA 37 C.F.R. § 1.76; if the application was filed on or after September 16, 2012, the specific reference must be included in an ADS in compliance with 37 C.F.R. § 1.76. For benefit claims under 35 U.S.C. § 120, 121, 365(c), or 386(c), the reference must include the relationship (i.e., continuation, divisional, or continuation-in-part) of the applications.
If the instant application is a utility or plant application filed under 35 U.S.C. § 111(a), the specific reference must be submitted during the pendency of the application and within the later of four months from the actual filing date of the application or sixteen months from the filing date of the prior application. If the application is a national stage application under 35 U.S.C. 371, the specific reference must be submitted during the pendency of the application and within the later of four months from the date on which the national stage commenced under 35 U.S.C. 371(b) or (f), four months from the date of the initial submission under 35 U.S.C. 371 to enter the national stage, or sixteen months from the filing date of the prior application. See 37 C.F.R. § 1.78(a)(4) for benefit claims under 35 U.S.C. § 119(e) and 37 C.F.R. § 1.78(d)(3) for benefit claims under 35 U.S.C. § 120, 121, 365(c), or 386(c). This time period is not extendable and a failure to submit the reference required by 35 U.S.C. § 119(e) and/or 120, where applicable, within this time period is considered a waiver of any benefit of such prior application(s) under 35 U.S.C. § 119(e), 120, 121, 365(c), and 386(c). A benefit claim filed after the required time period may be accepted if it is accompanied by a grantable petition to accept an unintentionally delayed benefit claim under 35 U.S.C. § 119(e) (see 37 C.F.R. § 1.78(c)) or under 35 U.S.C. § 120, 121, 365(c), or 386(c) (see 37 C.F.R. § 1.78(e)). The petition must be accompanied by (1) the reference required by 35 U.S.C. § 120 or 119(e) and by 37 C.F.R. § 1.78 to the prior application (unless previously submitted), (2) the applicable petition fee under 37 C.F.R. § 1.17(m)(1) or (2), and (3) a statement that the entire delay between the date the benefit claim was due under 37 C.F.R. § 1.78 and the date the claim was filed was unintentional. The presentation of a benefit claim may result in an additional fee under 37 C.F.R. § 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. § 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application. The Director may require additional information where there is a question whether the delay was unintentional. The petition should be addressed to: Mail Stop Petition, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia 22313-1450.
If the reference to the prior application was previously submitted within the time period set forth in 37 C.F.R. § 1.78 but was not included in the location in the application required by the rule (e.g., if the reference was submitted in an oath or declaration or the application transmittal letter), and the information concerning the benefit claim was recognized by the Office as shown by its inclusion on the first filing receipt, the petition under 37 C.F.R. § 1.78 and the petition fee under 37 C.F.R. § 1.17(m)(1) or (2) are not required. Applicant is still required to submit the reference in compliance with 37 C.F.R. § 1.78 by filing an ADS in compliance with 37 C.F.R. § 1.76 with the reference (or, if the application was filed before September 16, 2012, by filing either an amendment to the first sentence(s) of the specification or an ADS in compliance with pre-AIA 37 C.F.R. § 1.76). See MPEP § 211.02.
New Matter
(1) The amendment filed March 26, 2024 is objected to under 35 U.S.C. § 132(a) because it introduces new matter into the disclosure. 35 U.S.C. § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: every change in paragraph 2, and the removal of the instruction to incorporate PCT/TR2018/050742 by reference
Applicant is required to cancel the new matter in the reply to this Office Action.
(2) The amendment filed April 4, 2024 is objected to under 35 U.S.C. § 132(a) because it introduces new matter into the disclosure. 35 U.S.C. § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: every change in paragraph 2, and the removal of the instruction to incorporate PCT/TR2018/050742 by reference
Applicant is required to cancel the new matter in the reply to this Office Action.
(3) The amendment filed May 14, 2025 is objected to under 35 U.S.C. § 132(a) because it introduces new matter into the disclosure. 35 U.S.C. § 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: every deletion and insertion of text is new matter (other than the renumbering of paragraphs and the updating of the patent number in paragraph 1). This includes, but is not limited to, the amendments in paragraphs 2–9, 36–42, 223, 226, 233, 235, and 239–241.
Please note, the foregoing enumeration of paragraphs represents the Examiner’s best effort to find instances of substantive text deletion and insertion, given limited time, tools, and a lengthy specification. The Examiner’s finding of new matter extends to every deletion and insertion of text in the May 14 amendment, and the Examiner’s enumeration of paragraphs is merely exemplary.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Dependency Warning
The Applicant is advised to double-check that it intended to have claim 35 depend from claim 34, rather than claim 32. The Examiner observes that claims 32, 34, and 35 seem to correspond to original claims 1, 4, and 5, yet original claim 5 depended from claim 1 rather than claim 4. U.S. Patent No. 12,293,148 B2 (the parent application) follows the same pattern (claim 5 depends from claim 1, not claim 4)
These comments also apply to claims 44 and 53, which recite the system and computer-readable medium versions of claim 35.
Claim Objections
In claim 36, it is not sufficiently clear that the phrase “wherein associating comprises” is meant to refer back to a prior step. Assuming it is meant to refer back to the third step of the independent claims, it should be amended to more clearly refer back to that step (e.g., “wherein associating an application with at least one of the elements or the clusters of elements comprises”).
Claim 39 contains a similar informality, but with respect to the “adapting” limitation.
Claim 59 includes the phrase “wherein a super-object comprises an application that manipulates at least one of the elements of the respective cluster,” but the super-object was already introduced in the previous clause. Therefore, it should be changed to “[[a]] the super-object.”
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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 41–49 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the broadest reasonable interpretation of the server includes embodiments that are software per se. This is evident from the customary meaning of “server,” but also, the context of the specification seems to be consistent with this meaning. For example, paragraph 74 (of the published version) notes that the system includes “a browser-based application at the client-side, that works in collaboration with an application server and a database server at the server-side.” It further clarifies, that the “[c]lient-side application, i.e., the client, in collaboration with the server-side application, i.e., the server, may perform processes within the system.” This positions “the server” as the server-side application working in conjunction with client-side applications.
Claim Rejections – 35 U.S.C. § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. § 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 32–59 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. § 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The preliminary amendment—which was filed after the filing date of this application, and therefore not entitled to the same presumption as original claims—lacks support from the written description for a method where the first step is to “analyz[e] an encountered environment to identify each of the elements in the environment, wherein elements are virtual or physical elementary objects that compose objects in a virtual or physical environment.” This limitation appears in all four independent claims, and is therefore also incorporated into every dependent claim by reference.
It seems the Applicant may have inadvertently copied the phrase “each of” into the first method step from the second method step when attempting to rewrite original claim 1 as new claim 32. Instead, original claim 1 and original paragraph 216 (for example), only disclose analyzing the environment to identify elements in the environment, not each of the elements.
To remove the new matter, the Examiner recommends rewriting the first step of new claim 32 to mirror that of original claim 1 and original specification paragraph 216, e.g., “analyzing an encountered environment to identify or clusters of elements in the environment, wherein the elements are virtual or physical elementary objects that compose objects in a virtual or physical environment”
Claim Rejections – 35 U.S.C. § 112(b)
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 32–59 are 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.
The independent claims recite the limitation of "the cluster of elements.” There is insufficient antecedent basis for this limitation in the claim. It seems this error may have been introduced when attempting to copy the first method step from original claim 1 into new claim 32. The other independent claims contain a similar issue.
To provide proper antecedent basis, the Examiner recommends rewriting the first step of new claim 32 to mirror that of original claim 1 and original specification paragraph 216, e.g., “analyzing an encountered environment to identify or clusters of elements in the environment, wherein the elements are virtual or physical elementary objects that compose objects in a virtual or physical environment.” The Examiner recommends similar amendments for the corresponding independent claims.
Claim Rejections – 35 U.S.C. § 103
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) 32, 33, 36–42, 45–51, and 54–59 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2004/0205542 A1 (“Bargeron II”) in view of U.S. Patent Application Publication No. 2004/0205545 A1 (“Bargeron I”).
Claim 32
Bargeron II teaches:
A method comprising:
As shown in FIG. 1, Bargeron II teaches a system 100 that performs the claimed method as part of its normal operation. Specifically, the modules of annotation marking engine 102 perform the steps 140, 160 shown in FIGS. 3–4, while the modules of annotation re-anchoring engine 104 perform the steps 220, 228 illustrated in FIGS. 5 and 6a–6c. Bargeron II ¶¶ 25, 31, 36, and 72 (each paragraph explaining which module of system 100 is responsible for performing the respective steps of FIGS. 3–6c).
“Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device.” MPEP § 2112.02 (subsection I.). Moreover, the flowcharts and discussions of each flowchart as a “process” constitutes a disclosure of the method itself.
analyzing an encountered environment to identify each of the elements in the environment,
Starting with FIG. 1, the process begins with annotation marking engine 102 receiving indications of annotations 106 corresponding to underlying content, as well as the underlying content 108 itself. Bargeron II ¶ 16. The claimed environment corresponds to the content 108, while the claimed elements correspond to the indications 106.
wherein elements are virtual or physical elementary objects that compose objects in a virtual or physical environment;
“This identification can be made in any of a wide variety of conventional manners, such as by identifying the page number, line number, and character number of where the portion begins and ends.” Bargeron II ¶ 16. “Annotations can correspond to a portion of content 108 explicitly identified by a user, or alternatively a single point explicitly identified by the user (and the portion of content 108 being implicitly identified).” Bargeron II ¶ 16.
generating, for each of the elements identified, uniform element identifiers (UEIs),
“Once annotation marking engine 102 has captured the various features for the beginning point, ending point, and region in-between these points, the captured features are output as an annotation anchor 152.” Bargeron II ¶ 29.
each of the UEIs uniquely identifying a corresponding one of the identified elements,
“The annotation anchor thus describes various features or aspects of the portion of content 108 to which the annotation corresponds.” Bargeron II ¶ 29.
wherein each of the UEIs comprises at least one of: information regarding the environment,
“Various other features may also be extracted for the highlighted region, such as . . . an implementation-dependent document structure (e.g., an HTML, PDF, or RTF parse tree of the region).” Bargeron II ¶ 28.
relative position information of the corresponding one of the elements in the environment,
“Returning to FIG. 1, beginning point capture module 110 extracts one or more features regarding the beginning of the portion to which the annotation corresponds,” Bargeron II ¶ 21, and ending point capture module 112 likewise “extracts one or more features regarding the ending of the portion to which the annotation corresponds,” which may be the same types of features as were captured for the beginning point, but at the end. Bargeron II ¶ 23.
Claim 32 also requires the position to be “relative,” and to that end, Bargeron II further teaches that the beginning and end point features may be defined as “an offset of the beginning point relative to another point (e.g., relative to the beginning or ending of the entire document, the beginning or ending of a particular section of the document, etc.).” Bargeron II ¶ 21. As another example of relativity, the beginning and end point features may be “dependent on the implemented document structure (e.g., the position of the beginning point in a HyperText Markup Language (HTML), Portable Document Format (PDF), or Rich Text Format (RTF) parse tree).” Bargeron II ¶ 22.
distinctive properties of the corresponding one of the elements,
“[A]dditional features that may be extracted from the highlighted region are the distance between the beginning point of the region and each keyword, as well as the distance between each keyword and the ending point of the region. These distances can be measured in a variety of different manners, such as characters, words, pixel counts, inches (e.g., on the document when printed), etc.” Bargeron II ¶ 27.
or distinctive information of the corresponding one of the elements;
“Another feature that can be extracted by module 114 is a set of one or more keywords that exist within the region.” Bargeron II ¶ 25. These keywords are “distinctive” within the meaning of the claim, because Bargeron II specifically choses the words within the region that appear the fewest amount of times in the rest of the document. Bargeron II ¶ 26. In other words, module 114 selects the words in this region that are most unique to the rest of the document.
associating with at least one of the elements or at least one of the clusters of elements
“Upon receipt of indication 106, annotation marking engine 102 robustly captures the beginning point of the portion, ending point of the portion, and region between the beginning and ending points of the region,” thereby associating the indication 106 with the underlying content 108. Bargeron II ¶ 18.
re-analyzing the environment in response to the environment being subsequently encountered as a re-encountered environment to identify each of the elements in the re-encountered environment;
Annotation re-anchoring engine 104 is subsequently exposed to a new version of content 108, termed “modified content 156,” e.g., produced when content 108 was “altered by editor 154 prior to, subsequent to, or concurrently with the marking of annotations performed by engine 102,” Bargeron II ¶ 33, and responds to this encounter of modified content 156 as follows: in response to annotation re-anchoring engine encountering the modified content 156, annotation re-anchoring engine 104 analyzes it using its candidate region determination module 186 and score comparator module 188 to identify “content that reflects (or closely reflects) the same idea as was originally annotated given the content in display 120.” Bargeron II ¶¶ 33–35.
generating, for each of the elements identified in the re-encountered environment, new uniform element identifiers (nUEIs);
“ For each annotation to content 108, candidate region determination module 186 attempts to generate a score (based on the annotation anchor for that annotation) for one or more regions of modified content 156 to which the annotation may potentially correspond. The score for a candidate region reflects how well the candidate region matches the region in the original content to which the annotation corresponds.” Bargeron II ¶ 35.
comparing the nUEIs with the UEIs and associating the nUEIs with the UEIs based on respective predefined similarity thresholds; and
“Score comparator module 188 analyzes the various scores generated by candidate region determination module 186 and attempts to identify one of those candidate regions, based on the scores, to anchor the annotation to.” Bargeron II ¶ 35. Specifically, score comparator module 188 performs a check “as to whether the generated score exceeds a threshold value (act 230). If the score does exceed the threshold value then the candidate region is determined to be the region that the annotation is to be anchored to, and the annotation is attached to that region (act 232).” Bargeron II ¶ 38.
adapting respective
“Re-anchoring engine 104 uses annotation anchors 152, as well as modified content 156, to re-anchor the annotations to modified content 156, outputting re-anchored annotations 158.” Bargeron II ¶ 33.
In view of the foregoing, the only difference between the claimed UEIs and nUEIs, as compared to Bargeron II’s respective annotations 106 and re-anchored annotations 158, is that annotations 106 and re-anchored annotations 158 are not associated with “an application that manipulates at least one of the respective elements or the cluster of elements,” or “execution procedures” thereof. In other words, Bargeron II’s annotations contain data, but not necessarily data pointing to another application.
Bargeron I, however, teaches an upgraded version of the same annotations, with several other fields, including fields for the claimed “an application that manipulates at least one of the respective elements or the cluster of elements,” or “execution procedures” thereof, for reasons that will be discussed herein.
Moreover, Bargeron I further teaches a method with several steps that overlap with Bargeron II’s teachings, which will now be discussed together with the additional elements taught by Bargeron I, for context.
Specifically, Bargeron I teaches a method comprising:
generating, for each of the elements identified, uniform element identifiers (UEIs),
“An appropriate Extended Storage Handler is loaded and used to generate a new annotation with basic information (e.g., an id and creation date) filled in (act 404).” Bargeron I ¶ 149. FIG. 5 illustrates the data structure for an exemplary annotation 160. “Annotation element 160 includes an id field 172 that contains data identifying the annotation element 160,” which “may be a globally or locally unique identifier.” Bargeron I ¶ 43.
each of the UEIs uniquely identifying a corresponding one of the identified elements,
The annotation 160 “corresponds” to content in the document by linking to the content via “anchor 162.” Bargeron I ¶¶ 42 and 46. Thus, the id 172 uniquely identifies the portion of content in the document via its association with the anchor 162.
wherein each of the UEIs comprises at least one of: information regarding the environment,
The anchor 162 includes a “[r]esource sub-element 170” that has “a content/address data field 196,” which “contains literal resource data (it stores the resource ‘by value’) or the address (or other identifier) of a resource (it stores the resource ‘by reference’).” Bargeron I ¶ 50.
relative position information of the corresponding one of the elements in the environment,
“Anchor element 162 also includes . . . a position sub-element 168,” Bargeron I ¶ 47, with “[p]osition data field 190 [that] contains data that identifies a position for the anchor.” Bargeron I ¶ 49.
distinctive properties of the corresponding one of the elements,
“Annotation element 160 also includes . . . a property sub-element 164.” Bargeron I ¶ 43. “Each property sub-element 164 includes a name field 178, a format field 180, a property data field 182, and a codebase field 184.” Bargeron I ¶ 44.
or distinctive information of the corresponding one of the elements;
There are several elements in the annotation 160 that fall within the scope of the claimed “distinctive information.” Among those that are not mapped to other elements of the claim include the “author 174” or the “create date 176,” of the annotation, although others depicted may fall into the scope of “distinctive information” as well. See Bargeron I ¶ 43.
associating with at least one of the elements or at least one of the clusters of elements an application that manipulates at least one of the respective elements or the cluster of elements;
Additional fields populated by the client include the “codebase field 194” and “codebase field 200.” See Bargeron I ¶¶ 49–50 and FIG. 5. “Codebase field 194 . . . identifies a location(s) for a code module(s) that, when executed, can interpret the contents of position data field 190 based on format field 192.” Bargeron I ¶ 49. Likewise, “[c]odebase field 200 . . . identifies a location(s) for a code module(s) that, when executed, 8 can interpret the data in content/address data field 196 based on format field 198.” Bargeron I ¶ 50.
Note that Bargeron I’s annotations include a mechanism to annotate a cluster of elements, rather than a simple anchor, using a “composite anchor 220.” Bargeron I ¶ 52. Thus, codebase field 194 may be associated with an element or a cluster of elements.
identify each of the elements in the re-encountered environment;
At a subsequent time, when a user desires to view stored annotations for the content, “a request to retrieve an annotation is received from a client application (act 442).” Bargeron I ¶ 151.
generating, for each of the elements identified in the re-encountered environment, new uniform element identifiers (nUEIs);
“An appropriate Extended Storage Handler is loaded to handle the retrieve operation, based on the characteristics of the retrieval query (act 444). The requested annotation(s) are then retrieved from the annotation store to which the Extended Storage Handler is configured to connect (act 446) and returned to the requesting client application (act 448).” Bargeron I ¶ 151.
and adapting respective execution procedures of the application for the nUEIs in accordance with association and comparison of the nUEIs and the UEIs.
Using codebase field 194 from the retrieved annotation 160, “a client application that retrieves an annotation with an anchor having positioning data that the client application does not know how to interpret, can obtain instructions identifying how to interpret the positioning data.” 49. Similarly, using codebase field 200, “a client application that retrieves an annotation with an anchor having resource content/address data (literal or by-reference) that the client application does not know how to interpret, can obtain instructions identifying how to interpret the content data.” Bargeron I ¶ 50.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to enhance or upgrade Bargeron II’s annotations 106, 158 with the additional fields and data that Bargeron I teaches for its common annotation framework. One would have been motivated to enhance Bargeron II’s annotations with the additional fields from Bargeron I’s annotations because “it would be beneficial to provide a system which allows users to annotate different types of content and maintain a more consistent user experience.” Bargeron I ¶ 3.
Claim 33
Bargeron II and Bargeron I teach the method of claim 32, wherein generating UEIs comprises a subsequent step of
clustering interrelated elements among the identified elements based on respective relative positions of the elements, respective functional relationships of the elements with other elements, or both;
In addition to or instead of the simple anchor 162 shown in FIG. 5, annotations may be defined by incorporating a “composite anchor 220,” illustrated alone in FIG. 6, or a set 250, illustrated in FIG. 7.
To create an annotation that uses a composite anchor 220 as its anchor, the IDs for each simple anchor 162 are collected, so that they may eventually be stored in the anchor ID field 224 of the composite anchor 220. Bargeron I ¶ 53. Similarly, for sets 250, the IDs for each simple anchor 162 are collected, so that they may eventually be stored in the children field 258 of set 250. Bargeron I ¶¶ 56–57.
identifying, for each of the clusters of interrelated elements, at least one function of a respective cluster within the environment, and
When creating a composite anchor 220, its “role 228” field will be filled with information. Bargeron I ¶ 53. “Role field 228 includes data describing the reason the anchors contained within the composite anchor 220 have been grouped together.” Bargeron I ¶ 55. For example, a composite anchor can be used “to group redundant context anchors (e.g., where each context anchor supports a different method for positioning the annotation in the same resource), or to group multiple content anchors together (e.g., each of which represents a different human language translation of a user's comment).” Bargeron I ¶ 52.
In the case of sets, each set 250 of simple anchors further provides a property field 262, comprising a “codebase field 274 contains data identifying where to obtain a code module(s) with instructions that allow the data in fields 270 and 272 to be interpreted by a client application.” Bargeron I ¶ 58.
generating, for each respective cluster, uniform cluster function identifiers (UCFIs), each of the UCFIs including the at least one function of the respective cluster.
As shown in FIG. 6, each composite anchor 220 will be generated with both a composite ID field 226 that uniquely identifies the composite anchor 220, and associates the composite anchor 220 with its role field 228. Bargeron I ¶ 53.
Similarly, for the sets, each set 250 is generated to include an ID 252 that uniquely identifies the set 250 as a whole, associated together with the property and code base fields 262 and 274 described above. Bargeron I ¶ 56.
Claim 36
Bargeron II and Bargeron I teach the method of claim 33, wherein associating comprises an initial step of
receiving an input representative of a user interaction with at least one of the elements or the cluster of interrelated elements;
During the re-anchoring process, if there is ambiguity or an exception as to which section of the document should receive a re-anchored annotation, “UI module 190 may display to the user an identification of the annotation and the candidate region, and allow the user to input whether the region is the correct region to which the annotation should be attached. The user may thus identify which region is the correct region for the annotation, or alternatively indicate that the annotation should be orphaned.” Bargeron II ¶ 41.
storing the user interaction with the at least one of the elements as a super-object in association with the corresponding one of the UEIs, or storing the user interaction with the cluster of interrelated elements as a super-object in association with the corresponding set of the UEIs, and/or storing the user interaction with the cluster of interrelated elements as a super-object in association with the corresponding UCFI.
Whenever re-anchoring engine 104 re-anchors an annotation—whether automatically (as described in claim 32) or manually (as described in the rejection of this claim above)—“[r]e-anchoring engine 104 uses annotation anchors 152, as well as modified content 156, to re-anchor the annotations to modified content 156, outputting re-anchored annotations 158.” Bargeron II ¶ 33.
Recall that, to anchor any annotation to any piece of content, Bargeron I teaches that we store the anchor’s data as a “sub-element 162” of the annotation object 162. Bargeron I ¶ 43. Annotation 162 is thus the “super-object” of claim 36.
Claim 37
Bargeron II and Bargeron I teach the method of claim 33, wherein generating nUEIs comprises a subsequent step of
clustering interrelated elements among the identified elements in the re-encountered environment based on respective relative positions of the elements, respective functional relationships of the elements with other elements, or both;
In addition to or instead of the simple anchor 162 shown in FIG. 5, annotations may be defined by incorporating a “composite anchor 220,” illustrated alone in FIG. 6, or a set 250, illustrated in FIG. 7.
To create an annotation that uses a composite anchor 220 as its anchor, the IDs for each simple anchor 162 are collected, so that they may eventually be stored in the anchor ID field 224 of the composite anchor 220. Bargeron I ¶ 53. Similarly, for sets 250, the IDs for each simple anchor 162 are collected, so that they may eventually be stored in the children field 258 of set 250. Bargeron I ¶¶ 56–57. This process is performed for any annotation created using Bargeron I’s system, which, in the context of this rejection, includes the re-anchored annotations described in Bargeron II in the rejection of claim 32.
identifying, for each of the clusters of interrelated elements, at least one function of a respective cluster within the environment, and
When creating a composite anchor 220, its “role 228” field will be filled with information. Bargeron I ¶ 53. “Role field 228 includes data describing the reason the anchors contained within the composite anchor 220 have been grouped together.” Bargeron I ¶ 55. For example, a composite anchor can be used “to group redundant context anchors (e.g., where each context anchor supports a different method for positioning the annotation in the same resource), or to group multiple content anchors together (e.g., each of which represents a different human language translation of a user's comment).” Bargeron I ¶ 52.
In the case of sets, each set 250 of simple anchors further provides a property field 262, comprising a “codebase field 274 contains data identifying where to obtain a code module(s) with instructions that allow the data in fields 270 and 272 to be interpreted by a client application.” Bargeron I ¶ 58.
generating, for each respective cluster, new uniform cluster function identifiers (nUCFIs).
As shown in FIG. 6, each composite anchor 220 will be generated with both a composite ID field 226 that uniquely identifies the composite anchor 220, and associates the composite anchor 220 with its role field 228. Bargeron I ¶ 53.
Similarly, for the sets, each set 250 is generated to include an ID 252 that uniquely identifies the set 250 as a whole, associated together with the property and code base fields 262 and 274 described above. Bargeron I ¶ 56.
Claim 38
Bargeron II and Bargeron I teach the method of claim 33, further comprising
comparing the nUCFIs with the UCFIs and associating the nUCFIs with the UCFIs based on respective predefined similarity thresholds.
“Score comparator module 188 analyzes the various scores generated by candidate region determination module 186 and attempts to identify one of those candidate regions, based on the scores, to anchor the annotation to.” Bargeron II ¶ 35. Specifically, score comparator module 188 performs a check “as to whether the generated score exceeds a threshold value (act 230). If the score does exceed the threshold value then the candidate region is determined to be the region that the annotation is to be anchored to, and the annotation is attached to that region (act 232).” Bargeron II ¶ 38.
Claim 39
Bargeron II and Bargeron I teach the method of claim 33, wherein adapting comprises an initial step of
constructing, based on the UEIs and/or UCFIs, an initial state representation of the at least one of the elements or the cluster of interrelated elements associated with the application;
As mentioned in the rejection of grandparent claim 32, annotation marking engine 102 captures a robust set of features that describe the underlying content being annotated, one of which includes “a set of one or more keywords that exist within the region” annotated by indication 106. Bargeron II ¶ 25. As previously mentioned, these keywords are carefully chosen based on a statistical analysis of the entire corpus of words in the document that reveals which words, within indication 106, are the most unique to the region annotated by indication 106 (i.e., relative to the rest of the document). Bargeron II ¶¶ 25–26.
constructing based on the nUEIs and/or UCFIs a recent state representation of the at least one of the elements or the cluster of interrelated elements associated with the application; and
Later, when creating the re-anchored annotations, “[t]he keywords from the annotation anchor are identified (act 224),” “one of the keywords is selected (act 226),” and then in act 228, we generate “[a] candidate annotation region” within the modified content 156 as a potential place for where the annotation should be reanchored. Bargeron II ¶ 37.
comparing the initial state representation with the recent state representation to identify contextual and structural differences.
In a second part of act 228, a “score corresponding to the selected keyword [is] then generated based on the location of the keyword . . . based on the relationship of the keyword to any other keywords in the annotation anchor.” Bargeron II ¶ 37. Further details of the comparison are discussed in paragraph 47, though they are not necessary to meet the elements of claim 39.
Claim 40
Bargeron II and Bargeron I teach the method of claim 39, further comprising
adapting the respective execution procedures of the application to the recent state representation of the at least one of the elements or the cluster of interrelated elements associated with the application in accordance with the identified contextual and structural differences and/or predefined adaptation rules –if any.
Using codebase field 194 from the retrieved annotation 160, “a client application that retrieves an annotation with an anchor having positioning data that the client application does not know how to interpret, can obtain instructions identifying how to interpret the positioning data.”Bargeron I ¶ 49. Similarly, using codebase field 200, “a client application that retrieves an annotation with an anchor having resource content/address data (literal or by-reference) that the client application does not know how to interpret, can obtain instructions identifying how to interpret the content data.” Bargeron I ¶ 50.
Claims 41, 42, and 45–49
Claims 41, 42, and 45–49 recite a generic computer system that performs substantially the same method as recited in claims 32, 33, and 36–40. Since claims 32, 33, and 36–40 were rejected over a computer system in Bargeron I and II performing the methods of those claims, claims 41, 42, and 45–49 are likewise rejected over the same findings and rationale as provided above in the corresponding claims.
Claims 50, 51, and 54–58
Claims 50, 51, and 54–58 recite a memory that stores instructions for performing the same method as recited in claims 32, 33, and 36–40. Since claims 32, 33, and 36–40 were rejected over a computer system in Bargeron I and II performing the methods of those claims, claims 50, 51, and 54–58 are likewise rejected over the same findings and rationale as provided above in the corresponding claims.
Claim 59
Claim 59 recites a method that includes all of the steps recited in claim 37, because claim 37 incorporates all of the steps of its ancestor claims 32 and 33 by reference. See 35 U.S.C. § 112(d). To the extent there is are differences between claims 59 and 37, those differences all fall within the open-ended scope of claim 59. In other words, if there are any differences between the claims, it is only to the extent that claim 37 may recite steps that claim 59 does not require (but allows within its open-ended “comprising” scope).
Therefore, claim 59 is rejected over all of the findings and rationale as provided above for claim 37 (which includes all of the findings and rationale provided in the rejections of claims 32–33).
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 C.F.R. § 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 C.F.R. § 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 C.F.R. § 1.111(a). For a reply to final Office action, see 37 C.F.R. § 1.113(c). A request for reconsideration while not provided for in 37 C.F.R. § 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.
I. US 12,293,148 B2 anticipates Claims 32–34, 37–43, 45–52, and 54–59.
Claims 32–34, 37–43, 45–52, and 54–59 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 7, 12–14, 16, 18, 19, 21, 22, 27–29, and 31 of U.S. Patent No. 12, 293,148 B2.
Specifically, each pending claim is rejected over the following corresponding patented claim:
Pending Claim
32
33
34
36
37
38
39
40
Patented Claim
1
3
4
6
7
12
13
14
Pending Claim
41
42
43
45
46
47
48
49
Patented Claim
16
18
19
21
22
27
28
29
Pending Claim
50
51
52
54
55
56
57
58
Patented Claim
31
18
19
21
22
27
28
29
Pending Claim
59
Patented Claim
7
Although the claims at issue are not identical, they are not patentably distinct from each other because, to the extent there are any differences between the patented claims and the pending claims, those differences all lie with the patented claims reciting more steps, elements, or limitations than the corresponding pending claims. Those additional, unclaimed elements fall within the open-ended comprising scope of the pending claims. With respect to the pending claims reciting an “environment” rather than a “web page,” a web page is simply a species of the genus defined by the term “environment.” Prior art that discloses a species anticipates the genus to which that species belongs. MPEP § 2131.02.
Additionally, for pending claim 59, the super-object corresponds to at least a portion of the cluster information recited in patented claim 7.
II. 12,293,148 B2 and Bargeron I teach claims 35, 44, and 53.
Claims 35, 44, and 53 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 19 of U.S. Patent No. 12,293,148 B2 in view of Bargeron I.
Claim 35
Patented claim 4 recites everything in pending claim 34, but does not recite the additional limitations of pending claim 35.
Bargeron I, however, teaches:
receiving a user selection of the at least one of the elements or the cluster of interrelated elements;
“Initially, a request to retrieve an annotation is received from a client application (act 442).” Bargeron I ¶ 151. Recall that annotations in Bargeron I include a definition of the elements to which they are anchored, called a “context anchor 110.” Bargeron I ¶¶ 25–26. “Context anchor 110 typically includes a position field 116 that contains information about a position in the resource that the anchor 110 pertains to or is associated with.” Bargeron I ¶ 27. Thus, by selecting an annotation, the client application effectively selects the element to which the annotation is anchored, via its position field 116.
receiving user commands to generate the application that manipulates the selected at least one of the elements or the cluster of interrelated elements;
“Position field 116 can also include a codebase identifier so that code can be downloaded by a client application to handle any special processing on the position data itself, for instance in situations where the position data is very complex.” Bargeron I ¶ 27. Accordingly, in cases where “the application does not know what to do with” the position data describing the underlying content, “it can use the codebase attribute of the position element to download code that does.” Bargeron I ¶ 29.
and setting adaptation rules for the application according to the selected at least one of the elements or the cluster of interrelated elements.
Context anchors 110 further include a “resource element 114,” which has a “format attribute” that “identifies the internal structure of the resource, serving as a type identifier for applications.” Bargeron I ¶ 28. “In effect, an application can ask the resource element what kind of data is stored in the resource before the application attempts to parse the data.” Bargeron I ¶ 28.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to enhance or upgrade Claim 34 with the additional fields and data that Bargeron I teaches for its common annotation framework. One would have been motivated to enhance Claim 34 with the additional fields from Bargeron I’s annotations because “it would be beneficial to provide a system which allows users to annotate different types of content and maintain a more consistent user experience.” Bargeron I ¶ 3.
Claims 44 and 53
Claims 44 and 53 are each rejected over the same findings and rationale as provided above, but with patented claim 19 serving as the base claim.
III. US 11,625,448 B2 anticipates 32–37, 41–46, 50–55, and 59.
Claims 32–37 and 59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,625,448 B2.
Claims 41–46 and 50–55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of U.S. Patent No. 11,625,448 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because, to the extent there are any differences between the patented claims