DETAILED ACTION
Introduction
This office action is in response to applicant’s amendment filed 5/8/2026. Claims 1, 2, 4-6, 8-20, 22-25, 27-32 are currently pending and have been examined. The claim to foreign priority is acknowledged.
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 .
Claim Interpretation
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “configured to” in claims 1, 4, 15, 18, 22, 27 and 28.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 29 is 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.
More specifically, claim 29 depends on a cancelled claim 3, which renders the claim indefinite and fails to particularly point the subject matter as discussed above.
Allowable Subject Matter
Claims 1, 2, 4-6, 8-20, 22-25, 27, 30-32 are allowed.
The following is an examiner’s statement of reasons for allowance:
The instant application is deemed to be directed to a non-obvious improvement over the disclosure of Lepeltier (US 2017/0075877), Lipsey (US 2011/0035364) and Lutwyche (US 2013/0238987), and Henry et al. (Henry, US 2009/0138466).
Lepeltier teaches a device for drafting a patent document, comprising:
a screen configuration unit configured to configure a screen for drafting a patent document and provide it to a user through an input and output interface (paragraph [0116, 0160], Figs. 2, 21-24-his user input/output interface, his patent drafting discussion, see his various interface configurations for drafting a patent);
[an element management unit configured] to receive information of elements [as specific objects] that are capable of being included in contents of a patent document and described as text, and constitute an invention, from a user through the input and output interface and manage the information of elements (paragraph [0102, 0103, 0104, 0107, 0160, 0098, 0036]-his managed lexicon, and database of created texts, such as his published texts, and patent database of text items, received, created by a user, and developing a library of replacement candidates, see his “any numeral identifying an element”, thus elements and corresponding identification/numeral, facilitating description, the description as the words describing the patent application for an invention);
an auto-complete list generation unit configured to generate an auto-complete data set including element items generated based on the information of elements managed by the element management unit (ibid-Figs 21-23, paragraph [0160]-as his auto-completion data set, based on database of created texts, as described above), and extract an [element] item corresponding to a search term from the auto-complete data set to generate an auto-complete list (ibid-see his extracted items which are used to generated his candidate auto-complete list, corresponding to a search term, generated from the user input); and
a text input component management unit configured to manage a text input component to which the user is able to input the contents of a patent document as text (ibid-Figs. 21-23, paragraph [0160]- including a text input component, and user entered text as contents of a patent document), extract, as an auto- complete keyword, some of the text constituting the patent document input to the text input component (ibid-his user input, as comprising an auto-complete keyword, extracted and used to query the created database of elements), , transmit the extracted text as the search term to the auto-complete list generation unit, display, on a screen, the auto-complete list provided from the auto-complete list generation unit, replace, when the user selects any one element item included in the auto-complete list, the auto- complete keyword with the selected element item, and output the selected element item to the text input component (ibid, Figs. 21-23, paragraph [0160]-his search terms provided to the displayed auto-completion list, his user “select” of any one of the displayed auto-completion candidates from the list, and the replacement of the auto-complete keyword, in the text input space, with the selected element).
Lipsey teaches, an element management unit configured to receive information of elements as specific objects that are capable of being included in contents of a patent document and described as text, and constitute an invention, from a user through the input and output interface and manage the information of elements (Fig. 1 items 106, 018, 114, 116, 118, 120, 122, paragraph [0002, 0033, 0044, 0048, 0062-0064, 0090]-his database of elements, corresponding information of elements, as specific objects that are capable of being included in a patent document as drafted, his explicit illustrated elements, and corresponding key terms and numerical identifier, which are indexed and searched for, via the created index list, and used for auto-completion).
Lutwyche teaches the requirement review unit determines whether an antecedent has been properly used in front of the auto-complete keyword to be replaced by the text input component management unit] (ibid, paragraphs [0053]-his automatic review for “proper” antecedent basis for a term, wherein the antecedent is noted as being in front of a keyword, feature term).
Henry teaches automatic correction, replacement/deletion/insertion for antecedent issues.
Independent claims 1, 4, 15, 18, 20, 22, 27 and 30 set forth similar limitations containing allowable subject matter as described in the previous office action, and are thus allowed.
Dependent claims, 2, 5, 6, 8-17, 19, 23-25, 28, 31 and 32 are allowed, as they depend from their respective allowed parent claims.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892).
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 LAMONT M SPOONER whose telephone number is (571)272-7613. The examiner can normally be reached 8:00 AM -5:00 PM.
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, Daniel Washburn can be reached at (571)272-5551. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LAMONT M SPOONER/ Primary Examiner, Art Unit 2657
7/11/2026
Prosecution Insights