DETAILED ACTION
Introduction
This office action is in response to applicant’s claims filed 4/11/2024. Claims 1-32 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 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 Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 15, “component, ,” should probably be - -component, - -. Appropriate correction is required.
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 21 recites the limitation "the input key value" in line 5. There is insufficient antecedent basis for this limitation in the claim.
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 31 and 32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. More specifically, regarding claim 31, “a computer-readable recording medium" and regarding claim 32, “a computer program stored in a computer-readable recording medium" are deemed non-statutory, wherein a transitory, propagating signal is not a process, machine, manufacture or composition of matter, and thus cannot be patentable subject matter.
The broadest reasonable interpretation of a claim drawn to a computer readable medium (also called machine readable medium, computer-recording medium, and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. See MPEP 2111.01.
A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments to avoid a rejection under 35 U.S.C. $ I01 by adding the limitation "non-transitory" (if supported by the applicant’s original disclosure) to the claim (the Examiner notes, the applicant’s specification specifically teaches a distinction between a “storage medium” and “transmitted signal wave”, wherein the applicant has support for amending to a … storage medium).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 5, 6, 14, 19, 23, 25-26 and 28-32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lepeltier (US 2017/0075877) in view of Lipsey (US 2011/0035364).
As per claim 1, 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).
Lepeltier does not explicitly teach that which 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).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, as taught by Lipsey as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, from elements as specific objects, and searching using the element root portion, for an auto-completion element that can replace the key term, as entered into the text input space (ibid-Lipsey, paragraphs [0062-0064]).
As per claim 2, Lepeltier with Lipsey make obvious the device of claim 1, wherein the information of elements managed by the element management unit includes one or more of a name of an element, an identification number of the element, a translation of the element, whether the element is used, and the number of times that the element is used (ibid-see claim 1, Lipsey, element management and corresponding information, including name, identification, etc. of the element); and
wherein the element management unit manages the information of elements for each element as a single set, and assigns a unique key value to the element (ibid-Lipsey, Fig. 1 item 100, 108, Fig. 4 item 108-his information including unique key value for each element each row of elements as a single set, the managed element combination is similarly motivated and combined, as seen in claim 1).
As per claim 3, Lepeltier with Lipsey make obvious the device of claim 1, Lipsey further teaching that which Lepeltier lacks, wherein the information of elements managed by the element management unit includes a name of an element and an identification number of the element (ibid, Lipsey-Fig. 4, his text element name, and identification number, paragraph [0090]);
the element item in the auto-complete list includes a name of the element and an identification number of the element according to a preset format (ibid, Lipsey-paragraph [0062]-as his auto-completion list, suggestion to the user, including the name of the element, and the identification number, Fig. 4 items 110, 112, presented to the user); and
the text input element management unit replaces the auto-complete keyword with the element item in which the name of the element and the identification number of the element are included (ibid-see Lipsey, paragraph [0062, 0063]-replacement into the document discussion, the name and number are included).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, and auto-completes an input, including a name and numerical identifier as taught by Lipsey as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, from elements as specific objects, and searching using the element root portion, for an auto-completion element that can replace the key term, as entered into the text input space (ibid-Lipsey, paragraphs [0062-0064]).
As per claim 5, Lepeltier with Lipsey make obvious the 5. The device of claim 1, wherein, when a keyboard event for inputting text occurs in the text input component, the text input component management unit extracts the location of a cursor where the event occurred and then extracts text around the extracted location of the cursor according to a preset condition to set it as the auto-complete keyword (Lepeltier, Figs. 21-23, items 1092, 1094, his cursor, and inputted text, paragraph [0210, 0182, 0030]-his “keyboard” typing, and cursor selection, and selected text, claim 1, auto-complete keyword selection, and “preferably changed” and “to be changed” preset conditions); and
wherein when a keyboard event occurs among continuous strings included in the text input component, the text input component management unit replaces the auto-complete keyword with an element item selected from the auto-complete list while maintaining other contents input to the text input component as they are (ibid-Figs. 21-23, paragraph [0160, paragraph [0182]-his selection as the keyboard event among the continuous strings in Fig. 1, and the replacement is made while maintaining the other text strings).
As per claim 6, Lepeltier with Lipsey make obvious the method of claim 5, wherein the text input component management unit locates a cursor immediately after an auto-complete text input by replacing the auto-complete keyword (ibid-paragraphs [0160]-his cursor, delimitation in his text input field which manages the input, and replaces after auto-complete text input, see Fig. 22 item 1094).
As per claim 14, Lepeltier with Lipsey make obvious the device of claim 1, Lipsey further teaches that which Lepeltier lacks, wherein the screen configuration unit provides an element management screen for allowing the user to manage the elements (Fig. 3, as his management interface screen, paragraph [0056]-his edit management of all elements on the management screen); and
wherein when an element is added, changed, or deleted by the element management screen, the auto-complete list generation unit updates the auto-complete data set to correspond to information of the changed element (ibid-paragraph [0056]-see the above edit, adding, etc. of any element, the index, Fig. 4, is updated, for the auto-completion list, see paragraphs [0062-0064]).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an editable element management screen, as taught by Lipsey as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on editable and automatically generated index of key terms (ibid-Lipsey, paragraphs [0055-00560062-0064]).
As per claim 19, Lepeltier with Lipsey make obvious the device of claim 1, wherein an item included in the auto-complete list generated by the auto-complete list generation unit has an attribute value (Fig. 4, see his paragraph [0160, 0182]-his “to be changed” parameters, and “control parameters” for the options, presented to the user); and
the text input component management unit differently sets whether to allow not to be edited according to the attribute value and adds it to the text input component (ibid-see Figs. 21-23, paragraph [0182]-his edited text, that is “allowed to change” or not, as added to the input text field for auto-completion).
As per claim 23, Lepeltier with Lipsey make obvious the device of claim 1, wherein, Lipsey teaches that which Lepeltier lacks, the text input component management unit extracts the auto-complete keyword only when a character is input subsequent to a preset trigger character in the text input component (paragraph [0062, 0064]-his “CK” as the auto-complete keyword, extracted only when, subsequent to the preset advance number of characters is triggered I nteh input component, paragraph [0064]).
As per claim 25, Lepeltier with Lipsey make obvious the device of claim 1, wherein the input and output interface includes a microphone;
the text input component management unit converts voice data collected through the microphone into text data and inputs it into the text input component (ibid, Lepeltier, paragraph [0203] -his voice input mode, and corresponding text added to the input screen, Fig. 21 item 1091-his corresponding text, as based on the voice input, requiring a microphone); and
when an element item corresponding to the auto-complete list is present in the contents of converted text, the text input component management unit changes the text into a corresponding auto-complete block and outputs the corresponding auto-complete block to the text input component (ibid-Lepeltier, Figs. 21-23-items 1098, 1094-1095, 1091-as his auto-complete list, comprising element items from the voice input, and auto-complete block, outputting the text to the input component, item 1091).
As per claim 26, Lepeltier with Lipsey make obvious the device of claim 1, wherein the screen configuration unit is provided with the configuration of a screen for drafting a patent document from a server for drafting a patent document having a web server function (paragraph [0005, 0190]-his web, and publication server, and rendered image, Fig. 21 as his screen for drafting a patent document);
the screen for drafting a patent document implemented through the screen configuration unit is output to a user by an application capable of web browsing (ibid-paragraph [0190]-his web document, published, and URL as capable of web browsing); and
the text input component is a UI provided to a user through the application and is a form component of HTML or a tag that allows data to be entered (ibid-see paragraph [0091, 0181, 0190]- software environment, web and URL, and “HTML” and corresponding text, input, word processing software that allows data to be entered).
As per claim 28, Lepeltier with Lipsey make obvious the device of claim 1, further comprising, as lacking by Lepeltier and taught by Lipsey teaches:
a case management unit configured to receive information of a case generated to write one patent document through the input and output interface and manage the information of a case (Figs. 3 items 104, 308-as his case management unit, Fig. 4-his information of elements as managed, see his particular case information in item 308), wherein information of the element managed by the element management unit is case-dependent (ibid-see his specific elements, and corresponding component, as managed per the specific case as seen in Fig. 3).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey with Lutwyche to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, with respect to a specific case as managed, as taught by Lipsey, as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, for a specific case that is being managed, (ibid-Lipsey, Figs. 3, 4).
As per claim 29, Lepeltier with Lipsey make obvious the device of claim 3, wherein the auto-complete list generation unit generates the auto- complete list by extracting the element items in which the search word is included in the name of the element or the identification number of the element (ibid-Lipsey, paragraphs [0062-0064], Fig. 4 item 112-his search term, “CK” included in the element name, in his information of elements, his element name, as similarly combined and motivated, see claim 3).
As per claim 30, claim 30 sets forth limitations similar to claims 1 and 14 and is thus rejected under similar reasons and rationale, wherein the device is deemed to embody the method, such that Lepeltier with Lipsey make obvious a method for drafting a patent document using a device for drafting a patent document, wherein the device is configured to provide a screen for drafting a patent document configured by a screen configuration unit to a user through an input and output interface, the method comprises (ibid-see claim 1, corresponding and similar limitation, Lepeltier patent drafting, and screen interface, Figs. 21-23 Lepeltier paragraph [0005]-his method):
receiving, through an element management unit (ibid-see claims 1 and 14, corresponding and similar limitation, as taught by Lipsey), an instruction to register, delete, or modify 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, and storing, deleting or modifying the information of elements in an element information storage unit, according to the instruction (ibid-Lipsey, Fig. 3, as his management interface screen, paragraph [0056]-his edit management of all elements on the management screen, ibid-paragraph [0056]-see the above edit, adding, etc. of any element, the index, Fig. 4, is updated, for the auto-completion list, see paragraphs [0062-0064]);
updating, by an auto-complete list generation unit, an auto-complete data set including element item generated based on the information of the elements according to a result of processing the element information by the element management unit (ibid-see Lipsey, above updating for auto-completion discussion, from the elements);
receiving, by a text input component management unit, the contents of a patent document as text from a user through a text input component, extracting some of the text constituting the patent document input into the text input component as an auto-complete keyword, and providing it as a search term to the auto-complete list generation unit (ibid-see claim 1, corresponding and similar limitation);
extracting, by the auto-complete list generation unit, element item corresponding to the search term from the auto-complete data set and generating an auto-complete list using the extracted items (ibid-see claim 1, corresponding and similar limitation);
outputting, by the text input component management unit, the auto-complete list on a screen and receiving an input to select any one element item included in the auto-complete list from the user (ibid); and
replacing, by the text input component management unit, the auto-complete keyword input to the text input component with an auto-complete text of an element item selected by the user and outputting the auto-complete text to the text input component (ibid).
As per claim 31, claim 31 sets forth limitations similar to claim 1 and is thus rejected under similar reasons and rationale, wherein the computer-readable recording medium is deemed to embody the device, such that Lepeltier with Lipsey make obvious a computer-readable recording medium storing a computer program thereon, wherein the computer program comprises instructions for causing a processor to perform the method for drafting a patent document according to claim 30 (ibid-see claim 30 rejection, Lepeltier paragraph [0250]-his computer-readable medium providing program instructions).
As per claim 32, claim 32 sets forth limitations similar to claim 30 and is thus rejected under similar reasons and rationale, wherein the computer program stored in a computer-readable recording medium is deemed to embody the device, such that Lepeltier with Lipsey make obvious a computer program stored in a computer-readable recording medium, wherein the computer program comprises instructions for performing the method for drafting a patent document according to claim 30 by coupled to a device including one or more memory storing the instruction and one or more processor executing the instruction stored in the memory (ibid-see claim 30 rejection, Lepeltier paragraph [0250]-his computer-readable medium providing program instructions).
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lepeltier (US 2017/0075877) in view of Lipsey (US 2011/0035364), as applied to claim 1 above, and further in view of Lutwyche (US 2013/0238987) in view of Henry et al. (Henry, US 2009/0138466).
As per claim 24, Lepeltier with Lipsey make obvious the device of claim 1, further comprising:
a requirement review unit configured to review whether the contents of a patent document comply with the description requirements under a patent law (Lepeltier, paragraph [0126]-his patent rules, derived from patent manuals, evaluation and verification of the contents of a patent document);
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 [0087, 0103-0106, 0121]-his antecedent error-his automatic, management and reparation of antecedences, including addition, deletion and insertion, replacement during patent drafting); and
the text input component management unit adds the antecedent, deletes the antecedent or displays a result of an antecedent review when replacing the selected element item according to the determination result of the requirement review unit (ibid, his auto-completion drafting of a patent, as discussed above, Figs. 21-23, his automatic correction, of improper antecedent basis error, replacing a selected item with the correction, paragraph [0160]).
Lutwyche teaches that which Lepeltier lacks,
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).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey with Lutwyche to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, as taught by Lipsey, with using patent rules for drafting a patent application, identifying errors, such as antecedent basis, the antecedent issue in front of a feature keyword, as taught by Lutwyche as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, wherein the resulting draft follows patent drafting rules/law as entered into the text input space (ibid-Lutwchye, abstract, paragraph [0008]-his drafting and editing based on compliance with the patent offices).
Henry teaches that which the above combination lacks,
the text input component management unit adds the antecedent, deletes the antecedent or displays a result of an antecedent review when replacing the selected element item according to the determination result of the requirement review unit (ibid-paragraph [0131)-his automatic correction, of improper antecedent basis error, replacing a selected item with the correction).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey wit Lutwyche with Henry to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, as taught by Lipsey, with notating the location of the antecedent basis issue with respect to a feature word, as taught by Lutwche, with using patent rules for drafting a patent application and correcting any drafting error, such as antecedent basis errors, as taught by Henry as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, from elements as specific objects, and searching using the element root portion, for an auto-completion element that can replace the key term, as entered into the text input space, while correcting any patent rule drafting errors, such as antecedent basis issues (ibid-Lipsey, paragraphs [0062-0064], Lepeltier paragraph [0126], ibid-Lutwyche-his antecedent location, ibid-Henry-his automatic correction, and replacement/deletion/insertion for antecedent issues).
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 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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. (19/062,793, hereinafter, Yoo ‘793) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, ‘793 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 (claim 1 lines 11-his screen, corresponding input and output), line 1, his patent drafting);
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 (claim 1, lines 4, 5, 9, 10-his his “element management unit”, patent document, and screen input);
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, and extract an element item corresponding to a search term from the auto-complete data set to generate an auto-complete list (claim 1, lines 6-8-his “auto-complete list generation unit, see corresponding limitation); 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, lines 9-13-see corresponding and similar limitation), extract, as an auto- complete keyword, some of the text constituting the patent document input to the text input component (ibid-his text input unit, corresponding extraction), , 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-see corresponding limitation, his screen, corresponding auto-complete list, and replacement of auto-complete list).
Allowable Subject Matter
Claims 4, 7, 15, 18, 20, 22, 27 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 8-13 depend on claim 7, claims 16 and 17 depend on claim 15, and are therefore objected to, based on their respective parent, objected claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892).
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/LAMONT M SPOONER/ Primary Examiner, Art Unit 2657
2/7/2026