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 .
Claims 1-3, 6-10, 13-17, and 20 are pending.
Claims 1, 2, 8, 9, 14-16, and 20 are amended
Claims 4, 5, 11, 12, 18 and 19 are cancelled.
Response to Arguments
Applicant’s amendments and arguments, filed December 8, 2025, with respect to the objection to the specification have been fully considered and are persuasive. The objection to the specification has been withdrawn.
Applicant’s amendments and arguments with respect to the objection to the drawings have been fully considered and are persuasive. The objections to the drawings have been withdrawn.
Applicant’s amendments and arguments with respect to the objection to the claims have been fully considered and are persuasive. The objections to the claims have been withdrawn.
Applicant’s amendments and arguments with respect to the Section 112 rejections have been fully considered and are persuasive. The previous Section 112 rejections to claims 4, 11, 14, and 18-20 have been withdrawn. However, in view to the amendments, new Section 112 rejections have been set forth below.
Applicant’s amendments and arguments with respect to the Section 101 rejections have been fully considered and are persuasive. The Section 101 rejections have been withdrawn.
Applicant’s arguments with respect to Section 102 rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In so far as U.S. Patent Application Publication No. 20180239959 to Bui et al. is relied upon to teach argued limitations, those limitations are newly recited and the rejection has been updated to address any and all new limitations not previously addressed.
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 1-3, 6-10, 13-17, and 20 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.
Claims 1, 8, and 15 recite “the scanner capturing metadata associated with an additional visual layer of the digital document”. While the claims recite an “additional visual layer”, such a layer is not described in the specification. The only layer in the specification is a storage integration layer including the document tracking services in paragraphs [0007] and [0099]. As such, there is no evidence of possession of the “additional visual layer” recited in the claims. Appropriate correction is required.
Claims 1, 8, and 15 recite “a quality threshold of the workflow”. Nowhere in the specification is there a discussion of any threshold, much less a quality threshold. As such, there is no evidence of possession of “a quality threshold of the workflow” recited in the claims. Appropriate correction is required.
Claims 1, 8, and 15 recites “execute a model to extract one or more characteristics of a content the additional visual layer of the digital document, using at least in part the metadata captured by the scanner”. In the specification, paragraph [0097] states that the scanner data can provide metadata about the capture and also quality data and paragraphs [0112], [0120], and [0184] discuss upload metadata to the digital library. As such, there is no evidence of possession of to “execute a model to extract one or more characteristics” “using at least in part the metadata captured by the scanner” as recited in the claims. Appropriate correction is required.
The art rejections are set forth in view of the best understanding of the claims in view of these rejections.
Dependent claims 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, and 20 are rejected for at least for incorporating the issues of the claims from which they depend.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 6-10, 13-17, and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1, 8, and 15 recite “the scanner capturing metadata associated with an additional visual layer of the digital document”. It is unclear how a scanner can “capture” metadata, as metadata is not understood to be a part of the physical document. The specification describes “The scanner data can provide metadata about the capture” in paragraph [0097], and any other references to metadata refer to post capture data processing. For the purposes of examination, the capture of meta data will be understood to include processing such as OCR of the digital data capture. The recitation of “additional visual layer” but such a layer is not described in the specification. The only layer in the specification is a storage integration layer including the document tracking services. As the claims only recite a single layer and the specification does not recite any corresponding visual layers, it is unclear what is the scope of the term “additional visual layer”. Appropriate correction is required.
Claims 1, 8, and 15 recite “execute a model to extract one or more characteristics of a content the additional visual layer of the digital document, using at least in part the metadata captured by the scanner”. As noted above, for the purposes of examination, the capture of meta data will be understood to include processing such as OCR of the digital data capture. In paragraph [0130], the specification discusses several models that that may be use for visual data processing including OCR, but none of the models is seen to use metadata captured by the scanner. As such, it is unclear in what way metadata may be utilized to extract characteristic of an additional visual layer. It is also unclear if the additional layer is in some way separated to allow for different processing than other layers, but the use of other models for such processing does not appear to be set forth in the specification. Appropriate correction is required.
Claims 1, 8, and 15 recite “causing the scanner to scan a physical document to generate a digital document” and “the status of the digital document is updated based on the scanning of the physical document”. As the digital document is recited to be generated based on the scan of the physical document, it is unclear how something that is created and updated by a single scanning event. Appropriate correction is required.
Dependent claims 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, and 20 are rejected for at least for incorporating the issues of the claims from which they depend.
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.
Claims 1-3, 6-10, 13-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20180239959 to Bui et al. in view of U.S. Patent Application Publication No. 20150006957 to Ginzinger et al.
With regards to claims 1, 8, and 15, Bui et al. teaches:
a non-transitory, computer-readable medium including instructions which, when executed by one or more processors, cause the one or more processors (paragraphs [0448]-[450]) to:
receive, from a customer device, a request to initiate an online application (paragraph [0155], “For instance, the user device 110 can include an application engine 114, with the application engine 114 optionally being an electronic application (e.g., the electronic application can be downloaded from an application store) in communication with the system 100.”);
in response to receiving the request, initiate a workflow corresponding to a type of the online application, the workflow indicating required documents and required events for the online application (paragraph [0162], “Once the system receives an email, the system can identify the token to determine the context of the email (e.g., the intended discussion channels, the corresponding action in the workflow, particular task or step, and so on). Depending on the context of the email, certain actions can be automatically performed by the system, e.g., import the email content to a discussion channel, or upload an attachment to a document sharing channel. In this way, users can interact with the system via emails.”), the workflow indicating required documents and required events for the online application (paragraph [0177], “In various implementations, by utilizing an electronic graph (as described herein), the system may advantageously represent and enforce workflows and dependencies. For example, a typical process cycle of a task involving a legal document may include iterative creation by legal drafters, a review process by executives, the distribution to various parties for signing, and the collection of signatures. It may be undesirable to skip steps during this process; for example, it might be desirable to prevent non-reviewed documents from being distributed for signing. Advantageously, by using an electronic graph (e.g., as described herein in reference to various figures), the various permissible transitions may be represented as links, and the non-permissible as an absence of links.”), the workflow comprising:
route a request, … to a scanner of the digitization service system, causing the scanner to scan a physical document to generate a digital document (paragraph [0275, “Table 2400 may be created from an existing form (e.g., a scan of a paper form) by optical character recognition (OCR), or may be created based on an existing paper or electronic form by a user (e.g., a data entry clerk) transcribing questions and types of answers.”; ]paragraph [0282], “In block 2004 a, one or more potential signers may be determined from the document. The one or more signers may be determined based on metadata in the document (e.g., names contained within a metadata comment field), or by parsing names included in the document, such as on signature fields and/or else wherein. For example, if a document's signature page contains names of users known to the system, these users may be determined to be potential signers of the document.”; paragraph [0303], “Upon selection of one of signature request fields 2204 a, 2204 b, or 2204 c, a dialog comprising a document upload field 2207, a document preview field 2208 and a document download field 2209. Upon selection, document upload field 2207 may prompt the user to upload an electronic (e.g., signed and scanned) copy of the document associated with the selected signature request field”),
…;
determine, by a document event service, an event based on the one or more characteristics satisfying a quality threshold of the workflow (paragraph [0301], “Advantageously, combining the data in the scenario column associated with a given document, such as scenario columns 2116 a, 2116 b and 2116 c, may allow the system to quickly and automatically determine whether the completion criteria has been met. … The weight or approval rating may be compared with a threshold weight or threshold approval rating associated with the given document. For example, the document associated with scenario column 2116 a may be associated with a threshold approval rating of 60%; in this case, the system may determine that the threshold approval rating of 60% is met by the total approval rating of 65% and thus consider the document approved and proceed with the signature flow process, as illustrated with reference to FIG. 21. If, conversely, the document is associated with a threshold approval rating of 70%, the system may determine that the document has not been approved by the required number of signers, and thus wait for additional signatures to be received before proceeding with the signature flow process as illustrated with reference to FIG. 21.”);
based on the event, update a status of the online application including required documents for the online application (paragraph [0301], “For example, the document associated with scenario column 2116 a may be associated with a threshold approval rating of 60%; in this case, the system may determine that the threshold approval rating of 60% is met by the total approval rating of 65% and thus consider the document approved and proceed with the signature flow process, as illustrated with reference to FIG. 21.”);
store, by a document status service, the digital document in a data structure corresponding to the online application (paragraph [0189], “Since certain user roles, while not assigned a present task, may have relevance to completion of the present task, these certain user roles can be allowed to perform specific user actions. For example, a present task can be the preparation and uploading of documents, and can be assigned to counsel (e.g., in-house attorneys), with the documents requiring signatures of executives or board members. Therefore, the executives or board members may be capable of viewing the uploaded documents, commenting on the uploaded documents, optionally redlining the uploaded documents, but not be allowed to themselves upload a new version of the documents.”; paragraph [0214], “Additionally, and as described above, the system can enable people to perform actions, complete tasks, and so on without creating user accounts (e.g., a person can receive an email requesting a particular action, such as providing a signed copy of a document provided in the email, and the person can respond to the email with the signed copy; follow a link in the email to a secure content item, and upload the signed document via the content item).”; paragraph [0288], “Reviewers may be determined based on document-specific, signer-specific, or global rules. Document-specific rules may be associated with the specific document uploaded; for example, similar to the determination process of signers in block 2006, a set of reviewers may be automatically determined from metadata in the document.”); and
cause, via the unified standardized application program interface, a secondary processor to update, by a document tracking service, a status of the digital document, wherein the status of the digital document is updated based on the scanning of the physical document (paragraph [0214], “Additionally, and as described above, the system can enable people to perform actions, complete tasks, and so on without creating user accounts (e.g., a person can receive an email requesting a particular action, such as providing a signed copy of a document provided in the email, and the person can respond to the email with the signed copy; follow a link in the email to a secure content item, and upload the signed document via the content item).”; paragraph [0218], “The user devices can then receive information from the system 100 (e.g., information associated with a current electronic goal) and can update the user interfaces with the information.”; paragraph [0303], “Upon selection, document upload field 2207 may prompt the user to upload an electronic (e.g., signed and scanned) copy of the document associated with the selected signature request field. Document preview field 2208 may allow the user to preview (e.g., show, edit, and mark-up) an unsigned copy of the document associated with the selected signature request field.”; paragraph [0413], “A status 1706 of the documents, for instance a number of documents in negotiation, number that are ready to sign, and number that have been signed. As described above, the documents can be electronically signed, such that the system 100 can allow an entire completion of the electronic goal via the system 100. Button 1708 (“add new version”) may be selected by a user to create and/or upload a new version of the associated document.”); and
transmit, to the customer device, a message including the status of the online application including the status of the digital document (paragraph [0249], “User interface 1230 illustrates a shared workspace 1234 associated with a present task (e.g., signing documents 1232), with the workspace 1234 indicating information associated with the present task, such as a status of the task (e.g., an indication of signatures that have been collected or that need to be collected); timeline information 1238 indicating actions that have been performed with respect to the task, for instance, actions indicating documents are ready to sign, actions indicating sharing of documents for signature, and so on).”).
Bui et al. teaches the scanning and uploading of documents for workflow processing, but fails to explicitly teach using an application program interface. However, Ginzinger et al. teaches the workflow comprising:
route a request, via a unified standardized application program interface to a scanner of the digitization service system, causing the scanner to scan a physical document to generate a digital document (paragraph [0039], “A service may present one or more interfaces which can be utilized to access these functions. Such interfaces include APIs, interfaces presented for a web services, remote procedure calls, remote method invocation, etc.”; paragraph [0132], “To achieve this, the travel receipts are scanned and processed by using the OCR system. For each of these travel receipts or groups of travel receipts, a storage requirement for storing the travel receipts in a specific country may be defined, by the employee or the branch. This can be achieved by defining metadata and associating the metadata with travel receipts. The travel receipts scanned and processed by using the OCR system then are provided together with the metadata to the cloud.”),
the scanner capturing metadata associated with an additional visual layer of the digital document execute a model to extract one or more characteristics of a content the additional visual layer of the digital document, using at least in part the metadata captured by the scanner (paragraph [0132], “In one particular example, the system of the invention may be connected to an optical character recognition (OCR) system. Such a system may, for example, be used for travel receipt management. In such a system, it may be required that content, e.g., travel receipts, are to be stored at storage components being located in a specific country. For example, in a multi-national enterprise having branches in several countries all over the world, travel expense reports may be made by each of the branches separately. That is, the employees of one of the branches, e.g., the U.S. branch, traveling around the world report the travel expenses and forward travel receipts to their own branch only. To achieve this, the travel receipts are scanned and processed by using the OCR system. … his can be achieved by defining metadata and associating the metadata with travel receipts. The travel receipts scanned and processed by using the OCR system then are provided together with the metadata to the cloud. Based thereon, the cloud, e.g., the cloud processor 120 shown in FIG. 1 generates a storage instruction by translating the metadata, the storage instruction defining that the travel receipts are to be stored in a specific country, namely the country of the branch.”).
This part of Ginzinger et al. is applicable to the system of Bui et al. as they both share characteristics and capabilities, namely, they are directed to workflow data processing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Bui et al. to include the API coupled scanner with metadata creation as taught by Ginzinger et al. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Bui et al. in order to provide transparent storage solutions for digital storage solutions (see paragraph [0004] of Ginzinger et al.).
With regards to claims 2, 9, and 16, Bui et al. teaches to extract the one or more characteristics of the additional visual layer of the digital document using optical character recognition (paragraph [0281], “In block 2003, the set of document may be analyzed by the system. For each document in the set of documents, text and metadata, such as author, date, and other associated parameters, may be extracted and analyzed. Additionally or alternatively, the text and/or visual structure of the document may be analyzed (e.g., through Optical Character Recognition [OCR]) or by parsing a document in a machine-readable format (e.g., OpenDocument) to extract the text contained within the document.”).
With regards to claims 3, 10, and 17, Bui et al. teaches to request the digital document to be uploaded to a digital library (paragraph [0147], “The goal optimization system 100 is further in communication with, or optionally maintains, a data storage database 129 that can store documents, images, video, or any arbitrary information that is received from, or is made accessible to, users of the user devices (e.g., user device 110).”; paragraph [0165], “As an example, the system 100 can optionally present user interfaces that include functionality for creating tasks (e.g., a user of the system 100 can manipulate user interface elements, such as ovals, circles, and so on, and connect them together to form an electronic graph), defining actions that cause completion of the created tasks (e.g., the user can indicate particular conditions that must be satisfied before a task is to be completed, such as uploading documents, confirming terms, sharing documents with other users or user roles, and so on), optionally defining constraints on user actions of user roles not assigned each created task (e.g., the user can indicate that for a task assigned to counsel, other users may not be able to upload documents, created revisions of documents, and so on).”).
With regards to claims 6, 13, and 20, Bui et al. teaches to request the digital document to be uploaded by the customer device (paragraph [0125], “Each task can optionally be completed based on particular actions performed by one or more users, for instance a task to negotiate documents can include actions of (1) uploading a particular document and providing it to a negotiating user, (2) indicating approval, by all negotiating users, to the particular document, and optionally uploading other documents for discussion, messaging users, and so on.”).
With regards to claims 7 and 14, Bui et al. teaches the event comprises a signing event (paragraph [0027], “In an example embodiment, the limited users may receive an automatically generated email when new documents are available for their review and signature. By clicking a reference, such as a hyperlink, contained in the message, the limited user may be directed to an online system where the form will be presented. Once the limited user has signed the form, the systems of the present disclosure may automatically generate an electronic message to the administrative user, indicating that the form has been signed.”).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 12400014 to Whyte et al. discusses generating a digital document organizer for a user of an online software platform, adding at least a digital document to the digital document organizer, wherein the digital document represents a certification issued by a certifying authority, generating metadata associated with the digital document based on analyzing the digital document, storing metadata associated with the digital document, receiving, over a network, a request by the user to view the digital document, retrieving the digital document from a database in response to receiving a request to view the digital document, and transmitting the digital document and the metadata associated with the digital document to a device operated by the user as a response to the request to view the document.
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 Joshua D Schneider whose telephone number is (571)270-7120. The examiner can normally be reached on Monday - Friday, 9am-5pm.
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, Jessica Lemieux can be reached on (571)270-3445. 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.
/J.D.S./Examiner, Art Unit 3626
/ASFAND M SHEIKH/Primary Examiner, Art Unit 3626