DETAILED ACTION
This office action is responsive to communication(s) filed on 3/26/2026.
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 .
Specification
The new title provided by the applicant on 3/26/2026 is acceptable.
Claims Status
Claims 9-13 and 18 are pending.
Claim 9 is independent.
Claims 1-8 and 14-17 are newly canceled.
Claims 9-13 and 18 are currently being examined.
Claim Rejections - 35 USC § 112(a)
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.
Claim(s) 9-13 and 18 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.
Claim 9 recites “whereby the physical paper document stored in the document storage box is retrievable by reading the unique information from the NFC or RFID tag via the user terminal”. Here, this is unclear as it lacks correspondence with the Instant Specification. The Instant Specification describes a user can retrieve information from a document management apparatus, using unique identification information, in order to check on document information of physical document, ¶¶ 9, 30 and 45, instead of teaching that the physical paper document is retrievable with the identification information, as claimed. Retrieving electronic document content is an instantaneous, searchable data query, whereas retrieving a physical document requires navigating physical storage systems to locate, handle, and transport a tangible object. For purposes of compact prosecution only, the examiner interprets the limitation(s) as being directed to electronically retrieving information corresponding to the paper document. Correction required.
Claims 10-13 and 18 are is also rejected as they depend on the claim(s) above.
Claim Rejections - 35 USC § 112(b) or 112(2nd)
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(s) 9-13 and 18 is/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.
Claim 9 recites “whereby the physical paper document stored in the document storage box is retrievable by reading the unique information from the NFC or RFID tag via the user terminal”. Here, this is unclear as it lacks correspondence with the Instant Specification. The Instant Specification describes a user can retrieve information from a document management apparatus, using unique identification information, in order to check on document information of physical document, ¶¶ 9, 30 and 45, instead of teaching that the physical paper document is retrievable with the identification information, as claimed. Retrieving electronic document content is an instantaneous, searchable data query, whereas retrieving a physical document requires navigating physical storage systems to locate, handle, and transport a tangible object. For purposes of compact prosecution only, the examiner interprets the limitation(s) as being directed to electronically retrieving information corresponding to the paper document. Correction required.
Claims 10-13 and 18 are is also rejected as they depend on the claim(s) above.
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 of this title, 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) 9, 12 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hull, Jonathan J. et al. (hereinafter Hull – US 20040078749 A1) in view of Khan; Sudip Rahman et al. (hereinafter Khan – US 20210158542 A1) and Aikawa; Makoto et al. (hereinafter Aikawa – US 20060145817 A1) and Schmidtler; Mauritius A.R. et al. (hereinafter Schmidtler – US 20140153787 A1).
Claim 9:
Hull teaches: A document management method performed by a document management apparatus, comprising:
receiving […] document content of a physical paper a document […], (Paper document processing device 102 obtains an electronic representation of the original paper document , ¶ 95 and fig. 4)
the document content comprising a photograph of the physical paper document captured by a camera […] (device 102 may be include a camera, ¶ 32, for generating a scanned copy of a paper document, Abstract and ¶ 34 )
generating, by the document management apparatus, unique information associated with the document content (device 102 may generated/write the unique identification code for the document on an identification tag, ¶ 52)
[…];
[…] writ[ing] the unique information to a near field communication (NFC) tag or radio frequency identification (RFID) tag […] via short-range wireless communication; (device 102 may generated/write the unique identification code for the document on an identification tag, ¶ 52, because the tags are RFID tags are RFID tags, ¶ 53, herein, it is broadly interpreted that the writing is done via short-range wireless communication)
and mapping the document content to the unique information assigned to the NFC or RFID tag (the physical document is associated/mapped with an identification tag, ¶ 101 and fig. 4)
and storing the mapping in a database (stored in one or more databases, ¶¶ 74, 107-108 and 120)
[…],
whereby the physical paper document […] is retrievable by reading the unique information from the NFC or RFID tag […]. (The electronic information associated with the paper document is accessible/retrievable using the identifying information, ¶¶ 32, 119 and 120. For purposes of compact prosecution only, the examiner interprets the limitation(s) as being directed to electronically retrieving information corresponding to the paper document)
Hull does not appear to expressly teach, but Khan teaches:
that the document is “stored in a document storage box” (that a tracked asset may include a safe or deposit box that may contain confidential information, ¶¶ 9 and 15, and that a document may have confidential information, ¶ 2)
or that the wireless tag is “located at one side of the document storage box” (that the tag is attached to the asset, ¶ 77. Since typical safes/boxes are composed of six sides, the tag is interpreted as being attachable to the box by any one of these six sides).
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include that the document is “stored in a document storage box”, or that the wireless tag is “located at one side of the document storage box”, as taught by Khan.
One would have been motivated to make such a combination in order to improve the versatility and flexibility of the method to apply to addition types of document storage scenarios, including storage boxes that contain confidential information and which are used by certain types of institutions, such as banks, Khan ¶¶ 2, 9 and 15.
Hull, as modified, does not appear to expressly teach, but Aikawa teaches:
that the receiving of the document content is “from a user terminal via a network”, and transmitting the unique information to the user terminal via the network; “causing the user terminal to” performing the writing of the unique information onto the tag, that the database is “of the document management apparatus”, and that the paper document is retrievable “via the user terminal” (an RFID tag server is connected to a mobile terminal via a network, enabling the terminal and server communicate RFID related information, wherein the server includes a database for storing information associated with the tag ID, ¶ 9 and Aikawa Claims 2 and 8. As such, in using such concepts would allow for the paper document information, discussed in Hull, to be retrieved via the terminal, which acts as a portable tag reader/writer for the tag)
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include that the receiving of the document content is “from a user terminal via a network”, and transmitting the unique information to the user terminal via the network; “causing the user terminal to” performing the writing of the unique information onto the tag, that the database is “of the document management apparatus”, and that the paper document is retrievable “via the user terminal”, as taught by Aikawa.
One would have been motivated to make such a combination in order to achieve the same document storage/accessing capabilities of Hull-Khan with additional mobility and convenience, buy using a device that many people carry with them, Aikawa ¶ 5.
Hull, as modified, does not appear to expressly teach, but Schmidtler teaches:
that the camera is “of the user terminal”(scanning documents is equally applicable to using a mobile device, e.g., by capturing an image of the document using the mobile device’s camera, ¶ 121.).
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include that the camera is “of the user terminal”, as taught by Schmidtler.
One would have been motivated to make such a combination in order to implement added mobility/convenience discussed concerning the mobile-server in Hull-Aikawa modification, using document scanning concept known in mobile devices, Schmidtler ¶ 121.
Claim 12:
The rejection of claim 9 is incorporated. Hull, as modified, further teaches:
further comprising:
upon receiving a retrieval request comprising unique information of the NFC or RFID tag located at one side of the document storage box, (e.g., receiving a request to make a photocopy of a document, Hull ¶ 40. RFID tags, ¶ 53)
searching the database for document content stored by mapping the unique information and providing the same. (an identification code stored in the tag is read and used to find paper document information [providing…the unique information] stored in the tag or in one or more databases, Hull ¶ 80 and 119-121.)
Claim 18:
Claim(s) 18 is directed to A non-transitory computer-readable recording medium recording a computer program for performing the method recited in claim 9 by a computer, and is rejected using similar rationale(s).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hull (US 20040078749 A1) in view of Khan (US 20210158542 A1), Aikawa (US 20060145817 A1) and Schmidtler (US 20140153787 A1), as applied to claim 9 above, and further in view of Tadayon, Bijan et al. (hereinafter Tadayon – US 20020184517 A1).
Claim 10:
The rejection of claim 9 is incorporated. Hull, as modified, teaches does not appear to expressly teach, but Tadayon teaches:
further comprising: granting at least one user account a license to edit, delete, or register document content; (document rights are assigned [granting] to user based on a profile [account] of the user, ¶¶ 30 and 33 and fig. 1. The document rights may include a variety of actions the user is allowed, e.g., editing and distributing the document, ¶ 41. Herein, because the rights are tied to a particular user, based on a profile, the profile is broadly interpreted as a user account, at least for the purposes of rights management)
and transferring a first user account's license to a second user account (a first user can be granted the right to use a document which may, for example, involve a fee, and in addition, the user has the right to transfer the same or different rights to a second use, ¶¶ 14, 27 and 32).
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include further comprising: granting at least one user account a license to edit, delete, or register document content; and transferring a first user account's license to a second user account, as taught by Tadayon.
One would have been motivated to make such a combination in order to improve flexibility and security of information stored in the database/tags by use of digital rights management for functions such as editing and distributing of the documents, Tadayon ¶¶ 5 and 41.
Claim 11:
The rejection of claim 9 is incorporated. Hull, as modified, teaches does not appear to expressly teach, but Tadayon teaches:
further comprising: transferring document content registered by the first user account to the second user account or administrator account, or deleting the same. (The document rights may include a variety of actions the user is allowed, e.g., editing and distributing the document, ¶ 41)
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include further comprising: transferring document content registered by the first user account to the second user account or administrator account, or deleting the same, as taught by Tadayon.
One would have been motivated to make such a combination in order to improve flexibility and security of information stored in the database/tags by use of digital rights management for functions such as editing and distributing of the documents, Tadayon ¶¶ 5 and 41.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hull (US 20040078749 A1) in view of Khan (US 20210158542 A1), Aikawa (US 20060145817 A1) and Schmidtler (US 20140153787 A1), as applied to claim 12 above, and further in view of Tadayon (US 20020184517 A1) and Saito; Kazuo (hereinafter Saito – US 20060288424 A1).
Claim 13:
The rejection of claim 12 is incorporated. Hull, as modified, teaches does not appear to expressly teach, but Tadayon teaches:
comprising: when the retrieval request is a request from a licensed user account, providing [rights for allowing a user of a display device] for editing or registering the document content; (document rights are assigned to user based on a profile [account] of the user, ¶¶ 30 and 33 and fig. 1. The document rights may include a variety of actions the user is allowed, e.g., editing and distributing the document, ¶ 41. The user’s usage of the document is based on allowed usage requests, ¶ 41. Herein, because the rights are tied to a particular user, based on a profile, the profile is broadly interpreted as a user account, at least for the purposes of rights management.)
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include comprising: when the retrieval request is a request from a licensed user account, providing [rights for allowing a user of a display device] for editing or registering the document content, as taught by Tadayon.
One would have been motivated to make such a combination in order to improve flexibility and security of information stored in the database/tags by use of digital rights management for functions such as editing and distributing of the documents, Tadayon ¶¶ 5 and 41.
Tadayon further teaches that actions can be determined to be allowed or not allowed based on rights associated to their profile, ¶¶ 38-39.
Hull, as modified, does not appear to expressly teach, but Saito teaches:
that the display device functions are allowed via “a user interface including a menu” (displaying selectable menu items [user interface including menu], only when they are allowed according to usage rights, ¶ 64).
and when the retrieval request is not a request from a licensed user account, providing a user interface excluding the menu so that editing or registration of document content is not possible (displaying selectable menu items, only when [excluding the menu so that editing or registration of document content is not possible] they are allowed according to usage rights, ¶ 64)
Accordingly, it would have been obvious to a person having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of Hull to include that the display device functions are allowed via “a user interface including a menu”, and when the retrieval request is not a request from a licensed user account, providing a user interface excluding the menu so that editing or registration of document content is not possible, as taught by Saito.
One would have been motivated to make such a combination in order to improve functionalities and usability, to display options only when they usable by the user, Saito ¶ 64.
Response to Arguments
Applicant’s 103 arguments have been considered but are moot in view of the new ground(s) of rejection presented above.
Applicant’s 101 arguments have been fully considered and are persuasive. The 101 rejection has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Below is a list of these references, including why they are pertinent:
Rothschild; Leigh M. US 20090300025 A1, is pertinent to claim 1 for disclosing a document management system capable of tracking/provided a physical location information for files located in a cabinet/storage system, Abstract and ¶ 22.
Kawaguchi; Dean et al. US 20140253297 A1, is pertinent to claim 1 for disclosing a method for associating an image of a document with information relating to a radio frequency identification (RFID) tag, Abstract.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL S MERCADO whose telephone number is (408)918-7537. The examiner can normally be reached Mon-Fri 8am-5pm (Eastern Time).
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, Kieu Vu can be reached at (571) 272-4057. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gabriel Mercado/Primary Examiner, Art Unit 2171
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