DETAILED ACTION
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 .
Status of Claims
This office action is in response to the preliminary amendment filed on 2/28/2024.
Claims 1-7 have been canceled.
Claims 8-22 have been added.
Claims 8-22 are pending and have been examined.
Examiner’s Comment: Claims were filed on 7/24/2024, however, the examiner spoke with applicant’s representative John Hilton on 9/18/2025 regarding this claim set. Attorney Hilton indicated that this submission was to support a filing date however the claims meant to be examined are the ones from 2/28/2024 in which claims 1-7 were canceled and claims 8-22 were added.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No.PCT/JP2021/030550, filed on 8/20/2021.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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:
a contract document reading unit configured for… (Claims 13, 18)
a comment generation unit configured for analyzing and generating… (Claims 13, 14, 15, 18, 19, 20)
a comment modification unit configured for performing… (Claims 13, 16, 18, 21)
a comment output unit configured for outputting… (Claims 13, 18)
preferential contract document setting unit configured for causing… (Claims 14, 19)
article of priority extraction unit configured for extracting… (Claims 15, 20)
item acquisition unit configured for acquiring… (Claims 16, 21)
These appear to merely be the name of software modules assigned to a generic computer. (See Fig. 3; [0036], [0044]). Therefore, the structure assigned to these elements will merely be a generic computer that performs the functions.
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 § 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 8-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 8-12 are directed to a method. Claims 13-17 are directed to an apparatus. Claims 18-22 are directed to a non-transitory computer readable storage medium. Thus, on their face they fall within the four statutory categories of patentable subject matter.
Step 2A prong 1:
Claim 8, 13, and 18 recite virtually identical limitation. Claim 13 will be used as representative. Each claims additional elements will be addressed individually. The following limitations, when considered individually and as an ordered combination, are merely descriptive of abstract concepts:
Claims 8, 13, and 18:
reading, by an entity, at least document files of a first contract document and a second contract document related to the first contract document, in response to user selection of the first contract document and the second contract document;
analyzing and generating comments by the entity on articles included in at least the first contract document, in response to user operation, based on the document files read;
performing modification of the comments by the entity including addition, change and/or deletion of the comments generated, based on content of the second contract document; and
outputting by the entity the comments on the articles of the first contract document to a display for review by the user.
The following dependent claim limitations, when considered individually and as an ordered combination, are merely further descriptive of abstract concepts:
Claims 9, 14, 19:
further comprising: causing by the entity, the display to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or the articles included in the second contract document are to be preferentially applied; and
wherein the entity receives input from the user and the comments are generated by the entity based on the setting, and/or the comments are modified by the entity based on the setting.
Claims 10, 15, 20:
further comprising: extracting by the entity, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and
wherein the comments are generated by the entity based on content of the article of priority, and/or the comments are modified by the entity based on the content of the article of priority.
Claims 11, 16, 21:
further comprising: acquiring by the entity standard items from an item data store storing items that are to be generally included in a predetermined contract;
wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to notify the user that there is an omitted item in the first contract document is generated by the entity; and
wherein if the omitted item is written in the second contract document, the omission notification comment is modified by the entity
Claims 12, 17, 22:
wherein any one of the first contract document and the second contract document is a basic contract document, and the other of the first contract document and the second contract document is an individual contract document.
The claims provide a manner of reading document files of at least a first contract document and a second contract document, generating comments on articles included in the first contract based on document files read, performing modification for the comments based on the second contract document, and outputting the comments on the articles of the first contract. Thus, when considered individually and as an ordered combination, the claims embody mental processes. But for the inclusion of generic computing devices, a human analog would be able to perform the features of the claims either mentally or with pen and paper. As a result, the claims are considered under the “Mental Process” grouping of abstract ideas.
Step 2A prong 2: This judicial exception is not integrated into a practical application. The claims recite the following additional elements: a computer (claims 8, 9, 10, 11, 13, 18, 19, 20, 21); storage device (claim 8); terminal (8, 9, 13, 14, 18, 19); item database (claims 11, 16, 21); contract document reading unit (claims 13, 14, 18, 19); a comment generation unit (claims 13, 14, 15, 16, 18, 19, 20, 21); a comment modification unit (claims 13, 14, 15, 16, 18, 19, 20, 21); a comment output unit (claim 13, 18); preferential contract document setting unit (claims 14, 19); an article of priority extraction unit (claims 15, 20); item acquisition unit (claims 16, 21); non-transitory computer readable storage medium (claims 18-22);
The computer, storage device, terminal, item database, contract document reading unit, comment generation unit, comment modification unit, comment output unit, preferential contract document setting unit, article of priority extraction unit, item acquisition unit, and non-transitory computer readable storage medium are recited at a high level of generality and amount to mere instructions to implement the abstract idea using generic computing components (see Fig. 3; [0036], [0044]). The computing device merely processes data (reading, generating, performing, outputting, causing, extracting, acquiring, modifies). The various recited units appear to be nothing more than names given to software modules operating on the generic computer. Nothing in the claims improves upon computers or computer technology. The database and storage device are merely used as storage and retrieval of data. Nothing in the claims improves upon storage devices, storage device technology, databases or database technology. As a result, the claims do not go beyond the “apply it” level of implementation (See MPEP 2106.05(f)).
Accordingly, when considered both individually and as an ordered combination, the additional elements do not impose any meaningful limits on practicing the abstract idea.
Step 2B: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Similarly, as above with regard to practical application, the additional elements when considered both individually and as an ordered combination, do not provide an inventive concept as they merely provide generic computing components used as a tool to implement the abstract idea.
As a result, the claims are not patent eligible.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 8, 13, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homer (2015/0074145) in view of Ching (US 6,560,620)
As per claim 8:
Homer teaches:
A contract document review method for reviewing related contract documents by a computer, the contract document review method comprising ([0119] – documents can be contracts; [0009]):
reading by a computer at least document files of a first contract document and a second contract document related to the first contract document from a storage device, into the computer; (paragraph [0089] Step One (step 303) concerns the acquisition of the Current Document. Document acquisition can be accomplished by any number or means, depending upon the form in which the Current Document is initially received by the user. A document may be acquired, for example, from e-mail, scan, fax, or download. FIG. 9 shows a user screen for selecting "acquire document" from a menu and "from scanner" from a submenu. FIG. 10 shows a user screen for acquiring a document from a scanner. The document window shows the scanned document. Note that often scanned documents include artifacts that are introduced by the scanning process (as is shown in the figure). [0119] A system of the invention may have access to multiple databases of different types (e.g., database for patents and contracts). The user may be provided the option to use one or more of the databases during use. Using the feature, a user can ensure that the appropriate comments appear for the type of document the user will be reviewing. - documents can be contracts. See also [0090]-[0092])
analyzing and generating comments by the computer on articles included in at least the first contract document, based on the document files read; (paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0017] The method may include: adding a second comment to the second document associated with the same phrase as the first comment for the first document; and adding the second comment to the comments database, where the first and second comments are associated with the same phrase. [0107] In Step Five (step 320), the Program searches the Databases (a "Database Search") for those Archived Comments that correspond to Archived Phrases the same as or similar to Current Phrases. FIG. 14 shows a user screen for selecting a database query. The Program begins by parsing out the Current Document into Current Phrases. A Current Phrase might include a line of text, a single sentence, a single paragraph, a given number of consecutive words, or otherwise. Each Current Phrase serves as a set of search terms for the Database Search. The results of the Database Search include those Archived Phrases (and their associated Archived Comments) that correspond to the Current Phrases. [0138] In this diagram, a user 501, via the user device, adds new comments and selected phrases to the document, and these new comments and selected phrases are added to the local database.)
performing modification of the comments by the computer including addition, change and/or deletion of the comments generated based on content of the second contract document; and (paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0014] The first document may be retrieved on a first device by a first user and the second document is retrieved on a second device by a second user. The second device is different from the first device and the second user is different from the first user. [0015] The first comment may be stored in the comments database associated with a first phrase for which the first comment was made. The second document may include the first phrase. The first comment may be associated with an associated group of words in the first document. [0139] The user device searches a remote database 612 for current phrases in the current document. A different user than the user performing the search (referred to as a nonuser in the figure) may have input archived phrases and archived comments into the remote database. [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
outputting by the computer comments on the articles of the first contract document to a display of the terminal for review by the user. (Fig. 13-19; paragraph [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
Homer does not expressly teach allowing the user to select the specific first and second documents.
Ching teaches:
{…} in response to user selection of the first contract document and the second contract document at a terminal ([C2L18-24] In one embodiment, the most recent prior version of each of the documents may advantageously be listed in one list and the current version of the documents may advantageously be presented in another list. The user can then select a first document from one list and another document from the other list and request the document server computer to compare the selected documents.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include {…} in response to user selection of the first contract document and the second contract document at a terminal as taught by Ching with the comment adding of Homer in order to compare documents ([C2L18-24]).
As per claim 13:
Homer teaches:
A contract document review apparatus reviewing related contract documents, the contract document review apparatus comprising (paragraph [0063], [0119] – documents can be contracts):
a contract document reading unit configured for reading at least document files of a first contract document and a second contract document related to the first contract document, into a computer (paragraph [0089] Step One (step 303) concerns the acquisition of the Current Document. Document acquisition can be accomplished by any number or means, depending upon the form in which the Current Document is initially received by the user. A document may be acquired, for example, from e-mail, scan, fax, or download. FIG. 9 shows a user screen for selecting "acquire document" from a menu and "from scanner" from a submenu. FIG. 10 shows a user screen for acquiring a document from a scanner. The document window shows the scanned document. Note that often scanned documents include artifacts that are introduced by the scanning process (as is shown in the figure). [0119] A system of the invention may have access to multiple databases of different types (e.g., database for patents and contracts). The user may be provided the option to use one or more of the databases during use. Using the feature, a user can ensure that the appropriate comments appear for the type of document the user will be reviewing. - documents can be contracts. See also [0090]-[0092])
a comment generation unit configured for analyzing and generating comments on articles included in at least the first contract document, based on the document files read by the contract document reading unit; (paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0017] The method may include: adding a second comment to the second document associated with the same phrase as the first comment for the first document; and adding the second comment to the comments database, where the first and second comments are associated with the same phrase. [0107] In Step Five (step 320), the Program searches the Databases (a "Database Search") for those Archived Comments that correspond to Archived Phrases the same as or similar to Current Phrases. FIG. 14 shows a user screen for selecting a database query. The Program begins by parsing out the Current Document into Current Phrases. A Current Phrase might include a line of text, a single sentence, a single paragraph, a given number of consecutive words, or otherwise. Each Current Phrase serves as a set of search terms for the Database Search. The results of the Database Search include those Archived Phrases (and their associated Archived Comments) that correspond to the Current Phrases. [0138] In this diagram, a user 501, via the user device, adds new comments and selected phrases to the document, and these new comments and selected phrases are added to the local database.)
a comment modification unit configured for performing modification including addition, change and/or deletion for the comments generated by the comment generation process/unit, based on content of the second contract document; and (paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0014] The first document may be retrieved on a first device by a first user and the second document is retrieved on a second device by a second user. The second device is different from the first device and the second user is different from the first user. [0015] The first comment may be stored in the comments database associated with a first phrase for which the first comment was made. The second document may include the first phrase. The first comment may be associated with an associated group of words in the first document. [0139] The user device searches a remote database 612 for current phrases in the current document. A different user than the user performing the search (referred to as a nonuser in the figure) may have input archived phrases and archived comments into the remote database. [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
a comment output unit configured for outputting to a display of the terminal for review by the user, the comments on the articles of the first contract document generated by the comment generation process/unit and modified by the comment modification unit. (Fig. 13-23; paragraph [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
Homer does not expressly teach allowing the user to select the specific first and second documents.
Ching teaches:
{…} in response to user selection of the first contract document and the second contract document at a terminal ([C2L18-24] In one embodiment, the most recent prior version of each of the documents may advantageously be listed in one list and the current version of the documents may advantageously be presented in another list. The user can then select a first document from one list and another document from the other list and request the document server computer to compare the selected documents.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include {…} in response to user selection of the first contract document and the second contract document at a terminal as taught by Ching with the comment adding of Homer in order to compare documents ([C2L18-24]).
As per claim 18:
Homer teaches:
A non-transitory computer-readable storage medium storing a contract document review program for causing a computer to review related contract documents, the contract document review program causing the computer to function as (paragraph [0065], [0119] – documents can be contracts):
a contract document reading unit configured for reading at least document files of a first contract document and a second contract document related to the first contract document, into a computer,; (paragraph [0089] Step One (step 303) concerns the acquisition of the Current Document. Document acquisition can be accomplished by any number or means, depending upon the form in which the Current Document is initially received by the user. A document may be acquired, for example, from e-mail, scan, fax, or download. FIG. 9 shows a user screen for selecting "acquire document" from a menu and "from scanner" from a submenu. FIG. 10 shows a user screen for acquiring a document from a scanner. The document window shows the scanned document. Note that often scanned documents include artifacts that are introduced by the scanning process (as is shown in the figure). [0119] A system of the invention may have access to multiple databases of different types (e.g., database for patents and contracts). The user may be provided the option to use one or more of the databases during use. Using the feature, a user can ensure that the appropriate comments appear for the type of document the user will be reviewing. - documents can be contracts. See also [0090]-[0092])
a comment generation unit configured for analyzing and generating comments on articles included in at least the first contract document in response to user operation at the terminal, based on the document files read by the contract document reading unit; (Fig. 14-19; paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0017] The method may include: adding a second comment to the second document associated with the same phrase as the first comment for the first document; and adding the second comment to the comments database, where the first and second comments are associated with the same phrase. [0107] In Step Five (step 320), the Program searches the Databases (a "Database Search") for those Archived Comments that correspond to Archived Phrases the same as or similar to Current Phrases. FIG. 14 shows a user screen for selecting a database query. The Program begins by parsing out the Current Document into Current Phrases. A Current Phrase might include a line of text, a single sentence, a single paragraph, a given number of consecutive words, or otherwise. Each Current Phrase serves as a set of search terms for the Database Search. The results of the Database Search include those Archived Phrases (and their associated Archived Comments) that correspond to the Current Phrases. [0114] FIG. 15 shows a user screen for highlighting of words or phrases in the document for making a new comment entry. FIG. 16 shows a pop-up window with a comment list and comment for an accompanying phrase in the main document screen highlighted. FIG. 17 shows a pop-up window with a comment in the comment list for another phrase in the main document screen highlighted. FIG. 18 shows a user screen for a defined term check selecting words in the main screen with the cursor, mouse, or other selection tool. [0138] In this diagram, a user 501, via the user device, adds new comments and selected phrases to the document, and these new comments and selected phrases are added to the local database.)
a comment modification unit configured for performing modification including addition, change and/or deletion for the comments generated by the comment generation process/unit, based on content of the second contract document; and (paragraph [0013] In a specific implementation, the invention is a method including: retrieving a first document; adding a first comment to the first document; adding the first comment to a comments database; subsequent to adding the first comment, retrieving a second document; searching the comments database; and providing a list of comment results from searching the comments database, where the comment results include the first comment. [0014] The first document may be retrieved on a first device by a first user and the second document is retrieved on a second device by a second user. The second device is different from the first device and the second user is different from the first user. [0015] The first comment may be stored in the comments database associated with a first phrase for which the first comment was made. The second document may include the first phrase. The first comment may be associated with an associated group of words in the first document. [0139] The user device searches a remote database 612 for current phrases in the current document. A different user than the user performing the search (referred to as a nonuser in the figure) may have input archived phrases and archived comments into the remote database. [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
a comment output unit configured for outputting to a display of the terminal for review by the user, the comments on the articles of the first contract document generated by the comment generation process/unit and modified by the comment modification unit. (Fig. 13-19; paragraph [0140] As a result of the search, the user device finds archived phrases and archived comments and these are inserted into the current document. The user can save the current document with comments 616.)
Homer does not expressly teach allowing the user to select the specific first and second documents.
Ching teaches:
{…} in response to user selection of the first contract document and the second contract document at a terminal ([C2L18-24] In one embodiment, the most recent prior version of each of the documents may advantageously be listed in one list and the current version of the documents may advantageously be presented in another list. The user can then select a first document from one list and another document from the other list and request the document server computer to compare the selected documents.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include {…} in response to user selection of the first contract document and the second contract document at a terminal as taught by Ching with the comment adding of Homer in order to compare documents ([C2L18-24]).
Claim(s) 9, 14, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homer (2015/0074145) in view of Ching (US 6,560,620) in view of Hailpern et al (US 2017/0124039)
Homer in view of Ching teach the limitations of claim 8. As per claims 9:
Homer in view of Ching does not expressly teach causing by the computer, the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or the articles included in the second contract document are to be preferentially applied; and wherein the computer receives the input form the user and the comments are generated by the computer and/or the comments are modified by the computer.
Hailpern teaches:
causing by the computer, the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or the articles included in the second contract document are to be preferentially applied; and [0031] The user interface 300 can include, the digital note generator 336 to generate digital notes that corresponds to the digital document 334. Generating a digital note can include generating a digital note that includes content that is displayed at a time when the request to generate the digital note is received. For example, a user can select an add note button 354 when page 2 of the digital document 334 is displayed. When the add note button 354 is selected a tag 338-3 can be added to the digital document 334 and a corresponding digital note 341 can be added under a selected section 340. The selected section 340 can include a portion of data (e.g., text, video, image, etc.) that is highlighted by a user. In some embodiments, a section can be added to the digital note generator 336 by selecting the add section button 352. The number of sections can be used to categorize the number of generated digital notes. That is, a user can separate a plurality of notes based a preference of a user. For example, a user can separate a plurality of notes that are generated based on topics within the digital document 334 among other preferences of the user (e.g., based on test dates, based on table of contents, etc.).
wherein the computer receives the input form the user and the comments are generated by the computer and/or the comments are modified by the computer [0031] The user interface 300 can include, the digital note generator 336 to generate digital notes that corresponds to the digital document 334. Generating a digital note can include generating a digital note that includes content that is displayed at a time when the request to generate the digital note is received. For example, a user can select an add note button 354 when page 2 of the digital document 334 is displayed. When the add note button 354 is selected a tag 338-3 can be added to the digital document 334 and a corresponding digital note 341 can be added under a selected section 340. The selected section 340 can include a portion of data (e.g., text, video, image, etc.) that is highlighted by a user. In some embodiments, a section can be added to the digital note generator 336 by selecting the add section button 352. The number of sections can be used to categorize the number of generated digital notes. That is, a user can separate a plurality of notes based a preference of a user. For example, a user can separate a plurality of notes that are generated based on topics within the digital document 334 among other preferences of the user (e.g., based on test dates, based on table of contents, etc.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include causing by the computer, the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or the articles included in the second contract document are to be preferentially applied; and wherein the computer receives the input form the user and the comments are generated by the computer and/or the comments are modified by the computer as taught by Hailpren with the comment adding of Homer in view of Ching in order to create relationships and/or connections between materials within the digital document (paragraph [0006]).
Homer in view of Ching teaches the limitations of claims 13 and 18. As per claims 14 and 19:
Homer in view of Ching does not expressly teach a preferential contract document setting unit configured for causing the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or articles included in the second contract document are to be preferentially applied, the first contract document and the second contract document having been read by the contract document reading unit; and wherein the preferential contract setting unit receives the input from the user and comments are generated in the comment generation unit based on the setting in the preferential contract document setting unit, and/or the comments are modified in the comment modification unit based on the setting in the preferential contract document setting unit.
Hailpern teaches:
a preferential contract document setting unit configured for causing the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or articles included in the second contract document are to be preferentially applied, the first contract document and the second contract document having been read by the contract document reading unit; and [0031] The user interface 300 can include, the digital note generator 336 to generate digital notes that corresponds to the digital document 334. Generating a digital note can include generating a digital note that includes content that is displayed at a time when the request to generate the digital note is received. For example, a user can select an add note button 354 when page 2 of the digital document 334 is displayed. When the add note button 354 is selected a tag 338-3 can be added to the digital document 334 and a corresponding digital note 341 can be added under a selected section 340. The selected section 340 can include a portion of data (e.g., text, video, image, etc.) that is highlighted by a user. In some embodiments, a section can be added to the digital note generator 336 by selecting the add section button 352. The number of sections can be used to categorize the number of generated digital notes. That is, a user can separate a plurality of notes based a preference of a user. For example, a user can separate a plurality of notes that are generated based on topics within the digital document 334 among other preferences of the user (e.g., based on test dates, based on table of contents, etc.).
wherein the preferential contract setting unit receives the input from the user and comments are generated in the comment generation unit based on the setting in the preferential contract document setting unit, and/or the comments are modified in the comment modification unit based on the setting in the preferential contract document setting unit. [0031] The user interface 300 can include, the digital note generator 336 to generate digital notes that corresponds to the digital document 334. Generating a digital note can include generating a digital note that includes content that is displayed at a time when the request to generate the digital note is received. For example, a user can select an add note button 354 when page 2 of the digital document 334 is displayed. When the add note button 354 is selected a tag 338-3 can be added to the digital document 334 and a corresponding digital note 341 can be added under a selected section 340. The selected section 340 can include a portion of data (e.g., text, video, image, etc.) that is highlighted by a user. In some embodiments, a section can be added to the digital note generator 336 by selecting the add section button 352. The number of sections can be used to categorize the number of generated digital notes. That is, a user can separate a plurality of notes based a preference of a user. For example, a user can separate a plurality of notes that are generated based on topics within the digital document 334 among other preferences of the user (e.g., based on test dates, based on table of contents, etc.).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a preferential contract document setting unit configured for causing the display of the terminal to provide an input for the user to set whether the articles included in the first contract document are to be preferentially applied or articles included in the second contract document are to be preferentially applied, the first contract document and the second contract document having been read by the contract document reading unit; and wherein the preferential contract setting unit receives the input from the user and comments are generated in the comment generation unit based on the setting in the preferential contract document setting unit, and/or the comments are modified in the comment modification unit based on the setting in the preferential contract document setting unit as taught by Hailpren with the comment adding system/method of Homer in view of Ching in order to create relationships and/or connections between materials within the digital document (paragraph [0006]).
Claim(s) 10, 15, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homer (2015/0074145) in view of Ching (US 6,560,620) in view of Hailpern et al (US 2017/0124039) in view of Chimura (US 2004/0148280)
Homer in view of Ching in view of Hailpren teaches the limitations of claim 9. As per claim 10:
Homer in view of Ching in view of Hailpren does not expressly teach further comprising: extracting by the computer, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and wherein the comments are generated by the computer based on content of the article of priority, and/or the comments are modified by the computer based on the content of the article of priority.
Chimura teaches:
further comprising: extracting by the computer, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and ([0021] f. step(s) wherein second priority ranking(s) is or are decided by the receiving server(s) based on importance level(s) assigned to keyword(s) extracted as a result of the search of the received information; [0022] g. step(s) wherein comment(s) is or are created by the receiving server(s) based on the first and second priority ranking(s);)
wherein the comments are generated by the computer based on content of the article of priority, and/or the comments are modified by the computer based on the content of the article of priority. ([0021] f. step(s) wherein second priority ranking(s) is or are decided by the receiving server(s) based on importance level(s) assigned to keyword(s) extracted as a result of the search of the received information; [0022] g. step(s) wherein comment(s) is or are created by the receiving server(s) based on the first and second priority ranking(s);)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include further comprising: extracting by the computer, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and wherein the comments are generated by the computer based on content of the article of priority, and/or the comments are modified by the computer based on the content of the article of priority as taught by Chimura with the comment adding system/method of Homer in view of Ching in view of Hailpren in order to preferentially read the more important information from voluminous amounts of information (paragraph [0004]).
Homer in view of Ching in view of Hailpren teaches the limitations of claims 14 and 19. As per claims 15 and 20:
Homer in view of Ching in view of Hailpren does not expressly teach further comprising: an article-of-priority extraction unit configured for extracting, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and wherein in the comment generation unit, the comments are generated based on content of the article of priority, and/or in the comment modification unit the comments are modified based on the content of the article of priority.
Chimura teaches:
further comprising: an article-of-priority extraction unit configured for extracting, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and ([0021] f. step(s) wherein second priority ranking(s) is or are decided by the receiving server(s) based on importance level(s) assigned to keyword(s) extracted as a result of the search of the received information; [0022] g. step(s) wherein comment(s) is or are created by the receiving server(s) based on the first and second priority ranking(s);)
wherein in the comment generation unit, the comments are generated based on content of the article of priority, and/or in the comment modification unit the comments are modified based on the content of the article of priority. ([0021] f. step(s) wherein second priority ranking(s) is or are decided by the receiving server(s) based on importance level(s) assigned to keyword(s) extracted as a result of the search of the received information; [0022] g. step(s) wherein comment(s) is or are created by the receiving server(s) based on the first and second priority ranking(s);)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include further comprising: an article-of-priority extraction unit configured for extracting, from the document files of the first contract document and the second contract document, an article of priority stipulating the articles included in which of the first and second contract documents are to be prioritized; and wherein in the comment generation unit, the comments are generated based on content of the article of priority, and/or in the comment modification unit the comments are modified based on the content of the article of priority as taught by Chimura with the comment adding system/method of Homer in view of Ching in view of Hailpren in order to preferentially read the more important information from voluminous amounts of information (paragraph [0004]).
Claim(s) 11, 16, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homer (2015/0074145) in view of Ching (US 6,560,620) in view of Hailpern et al (US 2017/0124039) in view of Krishna et al (US 2022/0261711)
Homer in view of Ching in view of Hailpren teaches the limitations of claim 9. As per claims 11:
Homer in view Ching in view of Hailpren does not expressly teach further comprising: acquiring by the computer standard items from an item database storing items that are to be generally included in a predetermined contract; and wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to notify that there is an omitted item in the first contract document is generated; and wherein if the comment modification process, if the omitted item is written in the second contract document, the omission notification comment is modified.
Krishna teaches:
further comprising: acquiring by the computer standard items from an item database storing items that are to be generally included in a predetermined contract; and (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
Examiner’s Comment: The limitations of “wherein in the comment generation process, wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to notify that there is an omitted item in the first contract document is generated; and in the comment modification process, wherein if the omitted item is written in the second contract document, the omission notification comment is modified.” have little to no patentable weight in claim 11 because it is optional language in a method claim. The limitation is not positively recited and thus does not have to occur. (See MPEP 2111.04 | “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.”) The examiner has applied art to the limitation to promote compact prosecution, however, the examiner recommends restructuring the claim to positively recite the step as having to occur. This is not an issue in claims 16 and 21 because they are an apparatus claims and a medium claim. (See MPEP 2111.04 Il... The broadest reasonable interpretation of a system (or apparatus or product) claim having structure that performs a function, which only needs to occur if a condition precedent is met, requires structure for performing the function should the condition occur. The system claim interpretation differs from a method claim interpretation because the claimed structure must be present in the system regardless of whether the condition is met and the function is actually performed.)
wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to notify that there is an omitted item in the first contract document is generated; and (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
wherein if the comment modification process, if the omitted item is written in the second contract document, the omission notification comment is modified. (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include further comprising: acquiring by the computer standard items from an item database storing items that are to be generally included in a predetermined contract; and wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to notify that there is an omitted item in the first contract document is generated; and wherein if the comment modification process, if the omitted item is written in the second contract document, the omission notification comment is modified as taught by Krishna with the comment adding system/method of Homer in view of Ching in view of Hailpren in order to overcome ambiguity and gaps in a contract which can be extremely challenging—finding what is ‘missing’ in a large document, particularly when that missing feature can be one of many different features, and is time-consuming and highly susceptible to human errors, leading to execution of weak contracts (paragraph [0002]).
Homer in view of Ching in view of Hailpren teaches the limitations of claims 14 and 19. As per claims 16 and 21:
Homer in view of Ching in view of Hailpren does not expressly teach further comprising: an item acquisition unit configured for acquiring standard items from an item database storing items that are to be generally included in a predetermined contract; and wherein in the comment generation unit, wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to that effect; and wherein if the omitted item is written in the second contract document, the comment modification unit modifies the omission notification comment.
Krishna teaches:
further comprising: an item acquisition unit configured for acquiring standard items from an item database storing items that are to be generally included in a predetermined contract; and (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
wherein in the comment generation unit, wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to that effect; and (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
wherein if the omitted item is written in the second contract document, the comment modification unit modifies the omission notification comment. (Fig. 2; paragraph [0030] Furthermore, in some embodiments, the service can be configured to determine if there are clauses or terms that are generally understood to be essential but are missing in the contract. For example, clauses related to security expectations, changes in management, ownership of tasks, protection against volume variations, scope of services, and/or baseline periods (the time at which a party is expected to take over and be responsible for the obligations outlined in the contract) can be overlooked to the detriment of the signing parties. [0033] In addition, the contract system 100 can be implemented to identify missing sections, ambiguity, as well as calculate the risk associated with a particular SLA. [0045] n FIG. 7A, a schematic diagram depicts the flow through the specificity model 700, beginning with the submission of documents 708 into an MRC Engine 710, generating a knowledge repository (“learnt embeddings of contract knowledge”) 720 of past (historical) contracts and their classifications (e.g., Evergreen Warranty, Unlimited Data Liability, Lack of Indemnity, Transferred Liability for Severance, etc., and others as discussed earlier). This repository 720 is accessible by specificity model 700, as shown in FIG. 7A. See also [0037].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include further comprising: an item acquisition unit configured for acquiring standard items from an item database storing items that are to be generally included in a predetermined contract; and wherein in the comment generation unit, wherein if there is an omitted item, any item among the standard items that is not written in the first contract document, an omission notification comment to that effect; and wherein if the omitted item is written in the second contract document, the comment modification unit modifies the omission notification comment as taught by Krishna with the comment adding of Homer in view of Ching in view of Hailpren in order to overcome ambiguity and gaps in a contract which can be extremely challenging—finding what is ‘missing’ in a large document, particularly when that missing feature can be one of many different features, and is time-consuming and highly susceptible to human errors, leading to execution of weak contracts (paragraph [0002]).
Claim(s) 12, 17, 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Homer (2015/0074145) in view of Ching (US 6,560,620) in view of Hailpern et al (US 2017/0124039) in view of Ichikawa (US 2021/0182238)
Homer in view of Ching in view of Hailpren teaches the limitations of claims 8, 13, and 18. As per claims 12, 17, and 22:
Homer in view of Ching in view of Hailpren does not expressly teach wherein any one of the first contract document and the second contract document is a basic contract document, and the other of the first contract document and the second contract document is an individual contract document.
Ichikawa teaches:
wherein any one of the first contract document and the second contract document is a basic contract document, and the other of the first contract document and the second contract document is an individual contract document. ([0026] The “purchase” folder is a folder that stores electronic documents related to purchase. A folder for each client (for example, a “client A” folder) is defined below the “purchase” folder. Further, folders for each type of document (for example, an “individual contract document” folder, a “basic contract document” folder, an “inspection document” folder, and an “order document” folder) are defined below the folder of the client. A rule is predetermined such that the purchase-related electronic documents are stored in appropriate folders according to the client and the types of documents.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein any one of the first contract document and the second contract document is a basic contract document, and the other of the first contract document and the second contract document is an individual contract document as taught by Ichikawa with the comment adding system/method of Homer in view of Ching in view of Hailpren in order to provide uses with access to various types of contracts.
Response to Arguments
The examiner has considered and finds persuasive applicant’s arguments regarding previous claim objections. As a result, such objections have been withdrawn.
The examiner has considered but does not find persuasive applicant’s arguments regarding rejections under 35 USC 101. With regard to practical application, the examiner respectfully disagrees. The issue is not simply whether the invention has a practical use. The issue is whether the use of technology goes beyond the “apply it” level, provides more than a general link to a particular technological environment or field of use, and does not merely provide insignificant extra solution activity. As presently claimed, the examiner finds the claims clearly lack practical application as the claims merely recite computing elements at a high level of generality such that the computer is merely used to “apply it” (the abstract idea) using generic computing components. As discussed above, nothing in the claims provides an improvement to technology or a technical field.
Further, the examiner respectfully disagrees that the claims recite a technical solution to a technical problem. Analyzing multiple contract documents and modifying comments on the documents is a problem that would exist completely without computers at all. Thus, at its core, is not a technical problem. Further, the courts have held In OIP Technologies, Inc. v. Amazon.com, Inc. (788 F.3d 1359, 115 U.S.P.Q.2d 1090 (Fed. Cir. 2015)) on page 8 of the written opinion it states that relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.
Further, the examiner finds no similarities with the findings in McRO. McRO was found eligible because the rules used to implement the process of automated lip synching only were created to get a computer to do something a human would do in a different way. The present claims provide no such set of rules that only exist to get a computer to perform a task that a human would do differently. In this instance, the rules would be performed in the same way that human would perform them. For example, a human could access the documents, analyze and generate comments, modify comments in the first document based on comments in the second document, and output the comments of the first document based on the second document for review.
The examiner finds the present claims are not applicable to the findings in Core Wireless. Core Wireless allowed a user to access an interface element that allowed the user see what programs could be accessed without having to actually open the menu itself. This was held to be in improvement to interfaces themselves. The present claims provide no such improvement to an interface. The current invention merely displays content. In no way does this improve the interface itself. As a result, such rejections have been maintained.
Applicant’s arguments regarding rejections under 35 USC 102 and 103 are moot in light of new grounds of rejection which have been necessitated by amendment. With regard to the Homer system being entirely different form the present invention, the examiner respectfully disagrees. First, if applicant believes the inventions are completely different than applicant should amend the claims such that any meaningful differences are provided as claim limitations to differentiate from the teachings of Homer. Second, Homer teaches accessing a first document which includes a contract, extracting the comments from the document and associating them with phrases from the document, comparing a second document to the phrases, and recommending the comments to add to the document based on the comparison. This is essentially modifying the comments on a first document based on what was present in a second document. The argument regarding selecting specific documents is moot per the new grounds of rejection. Third, in order to apply the comments that were extracted from the first document and making them applicable to the second document, they would have to be related. See Fig. 15-19.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER STROUD whose telephone number is (571)272-7930. The examiner can normally be reached Mon. - Fri. 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Waseem Ashraff can be reached at (571) 270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER STROUD
Primary Examiner
Art Unit 3621B
/CHRISTOPHER STROUD/Primary Examiner, Art Unit 3621