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 non-final office action is in response to the application filed 29 February 2024.
Claims 1-18 are pending. Claims 1, 7, and 13 are independent claims.
Drawings
The examiner accepts the drawings filed 29 February 2024.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-5, 7-11, 13-14, and 17 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-12 and 15 of prior U.S. Patent No. 11,947,904. This is a statutory double patenting rejection.
Present application:
Patent 11,947,904:
1. A computer system, comprising:
1. A computer system, comprising (column 11, line 41):
memory, having processor readable code stored therein;
memory, having processor readable code stored therein (column 11, line 42);
at least one database storing a plurality of fillable electronic forms which correspond to various form documents intended for data input; and
at least one database storing a plurality of fillable electronic forms which correspond to various form documents intended for data input (column 11, lines 43-45); and
one or more processors communicatively coupled to the memory and configured to execute instructions in the processor readable code that cause the one or more processors to:
one or more processors communicatively coupled to the memory and configured to execute instructions in the processor readable code that cause the one or more processors to (column 11, lines 46-49):
automatically import, over a network, one or more of the plurality of fillable electronic forms from the at least one database;
automatically import, over a network, one or more of the plurality of fillable electronic forms from the at least one database (column 11, lines 50-52);
receive, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms
receive, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms (column 11, lines 53-55)
present a set of selectable fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields established in advance of presentment of the set of selectable fillable form fields
present a set of selectable form fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields, established in advance of presentment of the set of selectable fillable form fields (column 11, lines 56-63)
present the one or more of the plurality of fillable electronic forms; wherein each of the one or more plurality of fillable electronic forms are presented in entirety;
Present the one or more of the plurality of fillable electronic forms; wherein each of the one or more plurality of fillable electronic forms are presented in entirety (column 11, lines 64-67)
receive a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
receive a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields (column 12, lines 1-4)
stripe the user response as an identical response to be automatically deployed int at least a second fillable electronic form
stripe the user response as an identical response to be automatically deployed in at least a second fillable electronic form (column 12, lines 5-7)
automatically deploy the user response tin at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
automatically deploy the user response in at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields (column 12, lines 8-15)
in response to the request to select the one or more of the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms.
in response to the request to select the one or more or the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms (column 12, lines 16-25)
2. The system of claim 1, wherein in response to the selection of the one or more fillable fields comprises generating a field prompt to present the one or more fillable fields.
2. The system of claim 1, wherein in response to the selection of the one or more fillable fields comprises generating a field prompt to present the one or more fillable fields (column 12, lines 26-29).
3. The system of claim 1, wherein in response to the selection of the one or more fillable fields comprises generating a field panel to present the one or more fillable fields.
3. The system of claim 1, wherein in response to the selection of the one or more fillable fields comprises generating a field panel to present the one or more fillable fields (column 12, lines 30-32).
4. The system of claim 1, further comprising: receive another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms.
4. The system of claim 1, further comprising: receive another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms
(column 12, lines 34-37).
5. The system of claim 1, wherein the various form documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document.
5. The system of claim 1, wherein the various form documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document (column 12, lines 38-42).
7. At least one non-transitory computer readable medium containing processor readable code for programming one or more processors to perform a method comprising:
6. At least one non-transitory computer readable medium containing processor readable code for programming one or more processors to perform a method comprising (column 12, lines 43-45):
automatically importing, over a network, one or more of a plurality of fillable electronic forms which correspond to various form documents from at least one database
automatically importing, over a network, one or more of a plurality of fillable electronic forms which correspond to various form documents from at least one database (column 12, lines 46-48)
receiving, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms
receiving, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms (column 12, lines 49-51)
presenting a set of selectable fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields established in advance of presentment of the set of selectable fillable form fields
Presenting a set of selectable fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields established in advance of presentment of the set of selectable fillable form fields (column 12, lines 52-59)
presenting the one or more of the plurality of fillable electronic forms, wherein each of the one or more plurality of fillable electronic forms are presented in entirety
presenting the one or more of the plurality of fillable electronic forms, wherein each of the one or more plurality of fillable electronic forms are presented in entirety (column 12, lines 60-63)
receiving a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
receiving a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields (column 12, lines 64-67)
striping the user response as an identical response to be automatically deployed in at least a second fillable electronic form
striping the user response as an identical response to be automatically deployed in at least a second fillable electronic form (column 13, lines 1-3)
automatically deploying the user response in at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
automatically deploying the user response in at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable fields of the set of selectable fillable form fields (column 13, lines 4-11)
in response to the request to select the one or more of the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms
in response to the request to select the one or more of the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms (column 13, lines 12-19)
8. The method of claim 7, further comprising: generating a field prompt to present the one or more fillable fields.
7. The method of claim 6, further comprising: generating a field prompt to present the one or more fillable fields (column 13, lines 20-22).
9. The method of claim 7, further comprising: generating a field panel to present the one or more fillable fields.
8. The method of claim 6, further comprising: generating a field panel to present the one or more fillable fields (column 13, lines 23-25).
10. The method of claim 7, further comprising: receiving another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms.
9. The method of claim 6, further comprising: receiving another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms (column 13, lines 26-30).
11. The method of claim 7, wherein the various form documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document.
10. The method of claim 6, wherein the various for documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document (column 13, lines 31-34).
13. A non-transitory computer readable medium storing instructions executable by at least one processing device, the instructions including instructions to:
11. A non-transitory computer readable medium storing instructions executable by at least one processing device, the instructions including instructions to (column 13, lines 35-37):
automatically import, over a network one or more of the plurality of fillable electronic forms which correspond to various form documents from the at least one database
automatically import, over a network, one or more of the plurality of fillable electronic forms which correspond to various form documents from the at least one database (column 13, lines 38-41)
receive, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms
receive, at a user interface component via the network, a request to select the one or more of the plurality of fillable electronic forms (column 13, lines 42-45)
present a set of selectable fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields established in advance of presentment of the set of selectable fillable form fields
present a set of selectable fillable form fields, wherein the set of selectable fillable form fields comprises a curated list of one or more fillable form fields which originate from the one or more of the plurality of fillable electronic forms that correspond to the various form documents, the curated list of one or more fillable form fields established in advance of presentment of the set of selectable fillable form fields (column 13, line 46- column 14, line 5)
present the one or more of the plurality of fillable electronic forms, wherein each of the one or more plurality of fillable electronic forms are presented in entirety
present the one or more of the plurality of fillable electronic forms, wherein each of the one or more plurality of fillable electronic forms are presented in entirety (column 14, line 6-8)
receive a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
receive a user response for populating one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields (column 14, lines 9-11)
stripe the user response as an identical response to be automatically deployed in at least a second fillable electronic form
stripe the user response as an identical response to be automatically deployed in at least a second fillable electronic form (column 14, lines 12-14)
automatically deploy the user response in at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields
automatically deploy the user response in at least a second fillable electronic form from the one or more of the plurality of fillable electronic forms, the at least a second fillable electronic form having one or more fillable form fields shared in common with the one or more fillable form fields from the curated list of one or more fillable form fields of the set of selectable fillable form fields (column 14, lines 15-22)
in response to the request to select the one or more of the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms
in response to the request to select the one or more of the plurality of fillable electronic forms, present multiple fillable electronic forms separately fillable from one another and separately fillable from the set of selectable fillable form fields, wherein the identical response selectively striped across the one or more fillable form fields, the set of selectable fillable form fields, and the multiple fillable electronic forms (column 14, lines 23-30)
14. The system of claim 13, wherein in response to the selection of the one or more fillable fields comprises generating a field prompt to present the one or more fillable fields.
12. The system of claim 11, wherein in response to the selection of the one or more fillable fields comprises generating a field prompt to present the one or more fillable fields.
17. The system of claim 13, wherein the various form documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document.
15. The system of claim 11, wherein the various form documents comprise a blank form document as input by any user, a captured image thereof, a digitally recreated form document, necessary accompanying documents for any of the various form documents, or a completed form document.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-14 of U.S. Patent No. 11,947,904. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite an obvious variant of the patent.
Specifically, claims 15-16 of the present application depend upon independent claim 13. Claims 13 and 14 of Patent 11,947,904 depend upon intervening claim 12.
Present application:
Patent 11,947,904:
15. The system of claim 13, wherein, in response to the selection of the one or more fillable fields comprises generating a field panel to present the one or more fillable fields.
13. The system of claim 12, wherein, in response to the selection of the one or more fillable fields comprises generating a field panel to present the one or more fillable fields.
16. The system of claim 13, further comprising: receiving another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms.
14. The system of claim 13, further comprising: receiving another user response for populating one or more fillable form fields from the one or more of the plurality of fillable electronic forms.
Claims 6, 12, and 18 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 11 of U.S. Patent No. 11,947,904 in view of Walters et al. (US 2021/0103975, filed 3 October 2019).
As per dependent claim 6, the patent discloses the limitations similar to those in claim 1, and the same rejection is incorporated herein. The patent fails to specifically disclose providing artificial intelligence accessible by the user operable for applying an artificial intelligence methodology to the one or more of the plurality of fillable electronic forms and automatically triggering and executing an action on behalf of the user.
However, Walters, which is analogous to the claimed invention because it is directed toward form filling using a machine learning algorithm, discloses providing artificial intelligence accessible by the user operable for applying an artificial intelligence methodology to the one or more of the plurality of fillable electronic forms and automatically triggering and executing an action on behalf of the user (paragraph 0003-0004). It would have been obvious to one of ordinary skill in the art at the time of the applicant’s effective filing date to have combined Walters with the patent, with a reasonable expectation of success, as it would have allowed for filling forms based upon a determination made by a machine learning algorithm (Walters: paragraphs 0003-0004).
With respect to claims 12 and 18, the claim recites the limitations substantially similar to those in claim 6. Claims 12 and 18 are rejected under similar rationale.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Petersen (US 7418656): Discloses dynamic annotation of electronic documents (Abstract)
Paoli et al. (US 2004/0268229): Discloses displaying a form and a hierarchical arrangement of form fields for filling the form (Abstract)
Kristjansson (US 2005/0198563): Discloses assisted form filling (abstract) using artificial intelligence (paragraph 0008)
Schneider et al. (US 2007/0256005): Discloses auto-filling a form field (paragraph 0005)
Camanelli (US 2015/0205777): Discloses creating an electronic file corresponding to a printed image file of a document page (Abstract)
Singh et al. (US 2016/0314109): Discloses identifying and recommending form fragments to a form designer for generating a form document (Abstract)
Brown et al. (US 2016/0335239): Discloses an intelligence system for completing a form (Abstract)
Gillon et al. (US 2018/0324105): Discloses sending and receiving form data over a network (paragraph 0006)
Pathak et al. (US 2019/0213242): Discloses auto-populating a form field (Abstract)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KYLE R STORK whose telephone number is (571)272-4130. The examiner can normally be reached 8am - 2pm; 4pm - 6pm.
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, Omar Fernandez Rivas can be reached at 571/272-2589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE R STORK/Primary Examiner, Art Unit 2128
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