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 final rejection is in response to the amendment filed on: 02/02/2026.
With regards to claims 1-9, the prior 35 USC 101 rejections are maintained and updated to address/include applicant’s amendments. See an explanation of the updated 35 USC 101 rejections below.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 Analysis:
Step 2A, Prong One:
The claim recites the following, for which the bolded items are interpreted to encompass steps that fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment and opinion.
A computer program product embodying computer readable instructions stored on a non-transitory computer- readable storage medium for causing a computer to execute a process by at least one processor so as to perform the steps of: accessing a template document, wherein the template document includes a plurality of template document segments that include template information; displaying an inspection target document in a pane of a display device contemporaneously with access of the template document, wherein the inspection target document includes a plurality of inspection document segments; determining a related template document segment from among the plurality of template document segments included in the template document for a given inspection document segment of the plurality of inspection document segments included in the inspection target document based on a degree of relevance to the given inspection document segment; and determining, registration-related information associated with the related template document segment from among the template information as information to be displayed in the pane in association with the given inspection document segment that are preset as being related to the related template document segment; and controlling the display device to display the registration-related information in association with the given inspection document segment in the pane.
More specifically, the limitations of “perform the steps of: determining a related template document segment from among the plurality of template document segments included in the template document for a given inspection document segment of the plurality of inspection document segments included in the inspection target document based on a degree of relevance to the given inspection document segment; and determining, registration-related information associated with the related template document segment from among the template information as information to be displayed in the pane in association with the given inspection document segment that are preset as being related to the related template document segment” may be practically performed in the mind. For example, a person can make a judgment to determine a related a template document segment through manual evaluation of an inspection document within the inspection target document based on a degree of relevance to the given inspection document segment. Additionally a person can make a judgement to determine registration related information to be deemed next for upcoming/pending display activity/action. .
Step 2A, Prong Two:
The claim recites additional elements/limitations of :
“A computer program product embodying computer readable instructions stored on a non-transitory computer- readable storage medium for causing a computer to execute a process by at least one processor” ,” , these additional elements are considered merely reciting the words ‘apply it’ with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application.
“accessing a template document, wherein the template document includes a plurality of template document segments that include template information”, these additional elements are considered adding insignificant extra solution activity (‘Mere Data Gathering’) to the judicial exception (see MPEP 2106.05(g)). The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application.
““displaying an inspection target document in a pane of a display device contemporaneously with access of the template document, wherein the inspection target document includes a plurality of inspection document segments” and “controlling the display device to display the registration-related information in association with the given inspection document segment in the pane””, these additional elements are considered adding insignificant extra solution activity (‘Selecting a particular data source or type of data to be manipulated’) – MPEP 2106.05(g) “iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)”. The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application.
Step 2B:
As explained with respect to Step 2A, Prong Two, there are several additional elements:
“A computer program product embodying computer readable instructions stored on a non-transitory computer- readable storage medium for causing a computer to execute a process by at least one processor” , these additional elements were explained in step 2A, Prong Two as being considered as adding the words ‘apply it’ (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer. The courts have found this type of limitation as insufficient qualify as ‘significantly more’ when recited in a claim with a judicial exception.
“accessing a template document, wherein the template document includes a plurality of template document segments that include template information”, these additional elements were explained in step 2A, Prong Two as being considered as insignificant limitations of necessary data gathering/outputting. The courts have found limitations that add insignificant extra solution activity to the judicial exception as insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
““displaying an inspection target document in a pane of a display device contemporaneously with access of the template document, wherein the inspection target document includes a plurality of inspection document segments” and “controlling the display device to display the registration-related information in association with the given inspection document segment in the pane””, these additional elements are considered adding insignificant extra solution activity (‘Selecting a particular data source or type of data to be manipulated’) – MPEP 2106.05(g) “iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)”. The courts have found limitations that add insignificant extra solution activity to the judicial exception as insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
Thus, when considered, individually and in combination , these additional elements fail to amount to ‘significantly more’.
Claim 8
With regards to claim 8, it is rejected under similar rationale as claim 1.
Claim 9
With regards to claim 9, it is rejected under similar rationale as claim 1.
Claims 2-7 and 10-19
With regards to claims 2-7 and 10-19, they recite further judicial exceptions of mental steps (i.e. ‘detect whether … based on’, ‘… in response to …’ , ‘select …’, ‘determine …’, ‘applying …’, ‘… identifies …’) and/or mathematical concepts (‘calculate a degree …’). While they recite additional elements of: (i.e. ‘receive’/’receiving’, ‘access’, ‘display’/’displaying’, ‘adding … information received … to …’, ‘storing …’) , these additional elements have been similarly explained in their corresponding independent claim rejection (claim 1 or 9) as being insufficient to integrate the exception into a practical application and insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
Statutory Category analysis
-Claims 1-7 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 :
With regards to claim 1, the claimed ‘computer program product’ only comprises/embodies the computer readable instructions and does not necessarily also comprise the computer readable storage medium. Thus the claim appears to be directed to a computer program per se, which is not statutory. The examiner suggests the applicant consider clarifying that the computer program product comprises the non-transitory computer readable medium and then following with the medium storing the computer readable instructions , in the interest of addressing the issue(s). See MPEP 2106 below:
“Non-limiting examples of claims that are not directed to any of the statutory categories include:
• Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations”
With regards to claim 2-7, since they do not resolve the deficiencies of claim 1 above, they are rejected under similar rationale as claim 1.
Claim Rejections - 35 USC § 112
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 1-19 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.
With regards to claim 1, it recites “displaying an inspection target document in a pane of a display device contemporaneously with access of the template document, wherein the inspection target document includes a plurality of inspection document segments” and then subsequently making a determination of a related template document segment from among the plurality of document segments … based on a degree of relevance to the given inspection document segment, and then subsequently determining registration related information associated with the related template document segment as information to be displayed in the pane … and then finally performing the action of ‘display the registration-related information in association with the given inspection document segment in the pane”. This order of operations does not appear to be supported in the application’s instant specification (the act of displaying inspection target document and the template document in a pane first and then augmenting/rendering additional registration information subsequently into the already displayed pane. More specifically in the application’s specification in paragraph 0045, the registration information, template and article are displayed at same time.
To explain further, paragraphs 0044, 0067-0078 of the application’s specification further explain a specific sequence (3 step sequence where prior to display, steps 1-3 are performed and then finally at end of step 3, the display of inspection document , template document and registration are displayed at same time). This is in contrast to independent claim 1 which explains the inspection target document with access the template document being displayed first (with respect to a pane) and then the claim requires the already display pane being modified to subsequently include additional registration information.
With regards to claims 2-7, the claims do not resolve the deficiencies of claim 1 explained above, and thus, are rejected under similar rationale as claim 1 (since they depend upon the subject matter of claim 1).
With regards to claims 8 and 9, they are rejected under similar rationale as claim 1, and are rejected under similar rationale.
With regards to claim 10-19, these claims depend directly or indirectly upon one of independent claims (i.e claims 1 and 9) and since they do not resolve the deficiencies of their corresponding independent claims, then they are rejected under similar rationale.
Claim Rejections - 35 USC § 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) 1, 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller (US Application: US 2007/0130100, published: Jun .7 , 2007, filed: Dec. 7, 2005) in view of Hazard (US Application: US 2011/0004819, published: Jan. 6, 2011, filed: Jul. 6, 2010).
With regards to claim 1. Miller teaches
A computer program product … to perform the steps of:
accessing a template document, wherein the template document includes a plurality of template document segments that include template information (paragraph 0024: a template document/target-source such as ‘Texas Statutes and Code’ contains a plurality of portions (plurality of statutes));
displaying an inspection target document in a pane of a display device contemporaneously with access of the template document, wherein the inspection target document includes a plurality of inspection document segments (paragraph 0022: a case law document (seed document) is interpreted as the claimed ‘inspection target document’ and the case law document contains a plurality of head-note-portions ‘seed topics’ which are interpreted as the claimed ‘inspection document segments’);
determining a related template document segment from among the plurality of template document segments included in the template document for a given inspection document segment of the plurality of inspection document segments included in the inspection target document based on a degree of relevance to the given inspection document segment (paragraphs 0025 and 0049: a related topic segment in the target source is deemed to be related to a portion/segment/head-note-topic in the seed document (degree of relevance being judged by being commonly /’also discussed’ between segments/topic-portions); and
determining, registration-related information associated with the related template document segment from among the template information as information to be displayed in the pane in association with the given inspection document segment that are preset as being related to the related template document segment (paragraph 0034: registration information are the identified target source segments that are preset to apply to the seed topics (inspection target document segments) ); and
controlling the display device to display the registration-related information in association with the given inspection document segment in the pane (Figure 6A: the target document (seed document) having portions/segments are displayed with template source information (the target source data) and the template source information displayed in the practitioner’s tool box includes registration related information (content displayed is interpreted as serving content that is displayed to the user).
However although Miller teaches a computer program product and source document, Miller does not expressly teach … the computer program product embodying computer readable instructions stored on a non-transitory computer-readable storage medium for causing a computer to execute a process by at least one processor
Yet Hazard teaches … … the computer program product embodying computer readable instructions stored on a non-transitory computer-readable storage medium for causing a computer to execute a process by at least one processor (paragraph 0028: Fig. 1B: a computer with memory is implemented to execute a document system)..
It would have been obvious to one of ordinary skill in the art before effective filing to have modified Miller’s ability to process each source document (each having seed topics) and associate, receive and display second content/articles (from candidate target document(s) with corresponding source document content(s) based on relevance, such that the source document is further processed in a computer system having memory and processor to allow identification/selection by a user as taught by Hazard. The combination would have allowed Miller to have allowed users to organize , customize and generate documents with great flexibility (Hazard, paragraph 0006).
With regards to claim 8, the combination of Miller and Hazard teaches the limitations of claim 8, as similarly explained in the rejection of claim 1, and is rejected under similar rationale.
With regards to claim 9, the combination of Miller and Hazard teaches the limitations of claim 8, as similarly explained in the rejection of claim 1, and is rejected under similar rationale.
Response to Arguments
Applicant's arguments filed 02/02/2026 have been fully considered but they are not persuasive.
The applicant argues with respect to amended claim 1, that “displaying an inspection target in a pane of a display device cannot be practically performed in the human mind”, and thus satisfies step 2A, and recites patent eligible subject matter. However this argument is not persuasive since this limitation is addressed in the 101 step 2A prong 2 analysis above, which explains that the limitation/additional-elements are considered adding insignificant extra solution activity (‘Selecting a particular data source or type of data to be manipulated’) – MPEP 2106.05(g) “iii. Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)”. The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application. Furthermore, as also explained in the 101 step 2B analysis above, the limitation/additional element is also insufficient to be considered ‘significantly more’.
The applicant argues with regards to 35 USC 103, that amended claim 1 is allowable since Miller does not discuss or suggest “determining a related template document segment from among the plurality of template document segments included in the template document for a given inspection document segment of the plurality of inspection document segments included in the inspection target document”. However the applicant’s amendment have changed the scope of the invention and necessitated a new grounds of rejection/mapping using Miller. More specifically, Miller has been shown/explained to teach the newly amended in the 35 USC 103 rejection above, and the examiner respectfully directs applicant’s attention to the rejection for an explanation as to how Miller teaches/addresses these limitations.
The applicant further argues the contents of the tool boxes (in Miller) do not include any information from the seed document that are included in the tool box and thus the applicant submits Miller does not teach “… display the registration related information in associate with the given inspection document in the pane”. However this argument is not persuasive since the term pane can be interpreted as content within the application window, and given this interpretation, Miller is maintained to teach the amended claim language (that a document/source document (having a plurality of source segments (interpreted as inspection document segment(s))) is displayed in an application area/pane that also contains the template document segments. In the interest of expediting the prosecution of the application, the examiner suggests the applicant consider the possibility of clarifying claim 1 to include display of the target document (which already has target document segments) and a separate and additional bounded display area, which includes the target document segment(s) within the bounded area and the registration information in the bounded area as well.
The applicant argues claims 8 and 9 are allowable for reasons presented for claim 1 above, however this argument is not persuasive since claim 1 has been shown/explained as rejected above.
The applicant argues the remaining dependent claims are allowable for reasons presented by the applicant for their corresponding independent claims. However this argument is not persuasive since the independent claims have been shown/explained to be rejected above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILSON W TSUI whose telephone number is (571)272-7596. The examiner can normally be reached Monday - Friday 9 am -6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Queler can be reached at (571) 272-4140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILSON W TSUI/ Primary Examiner, Art Unit 2172
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