DETAILED ACTION
This Non-Final communication is in response to Application No. 18/709,299 filed 5/10/2024 which claims priority from PCT/IL2022/051200 filed 11/10/2022 and Provisional Application No. 63/263,943 filed 11/11/2021. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-18 have been examined.
Specification
The abstract of the disclosure is objected to because it is not on a separate sheet as required. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant' s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. The specification does not clearly specify (nor could it be determined) which drawing depicts the limitation of each independent claim that states “generating at least one output facilitating editing of the new document for compliance with said regulation.” No new matter should be entered.
The drawings are objected to under 37 CFR §1.84(c). The drawings are stamped with priority application numbers rather than the instant application number.
The drawings are objected to under 37 CFR §1.84(p)(5). It is not clear where reference characters (i.e., “Operation[s] 10-340”) throughout the specification appear in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 6 is objected to because of the following informalities: it appears “performs at least one phrase-level analysis of the at least one new document on said phrases” was intended.
Claim 10 is objected to because of the following informalities: it appears “wherein said hardware processor is configured for detecting at least one of tables, graphs, or blocks in the new document” was intended.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1 (and similarly in claims 17 and 18), the limitation that recites “a plurality of catalogues (aka "data catalogues") associated in memory with, and storing, in said memory, data regarding, a respective plurality of authorized documents, each having content known to be compliant with at least one regulation” replete with enough punctuation and sentence structure issues that the limitation is indefinite.
Specifically, “a plurality of catalogues (aka "data catalogues") associated in memory with, and storing” is indefinite because (1), it appears “what” the catalogues are associated with is omitted from the limitation before starting a new function of “storing”, and (2), it is not clear what the intended function of “(aka "data catalogues")” is, or what it is adding to the limitation or claims because “data catalogues” is never referenced again in the claims. It is also unclear what “data regarding, a respective plurality of authorized documents” is supposed to mean or whether language is missing from the limitation with the comma after “regarding”.
The limitation that recites “review at least one new document comprising a new version associated by an individual end-user from among the plural end-users with an individual authorized document from among said plurality of authorized documents, by comparing the new document to the catalogue from among said plurality of catalogues which is associated in memory with said individual authorized document” replete with enough sentence structure issues that the limitation is indefinite.
Specifically, “review at least one new document comprising a new version associated by an individual end-user from among the plural end-users with an individual authorized document from among said plurality of authorized documents” is indefinite because (1), the “new document comprising a new version” appears to be missing “what” the new version is of, (2), what that the “associated by” action is as performed by an end-user is unclear, (3) “with an individual authorized document from among said plurality of authorized documents” appears to be only the second half of a limitation or out of place in general, and (4) “the catalogue” lacks antecedent basis in the claim.
Regarding claim 5, it is not clear what limitation or function “by creating a work environment in which the catalogue C is created and associating the plural end-users with different work environments in which different catalogues are created” is continuing to define.
Regarding claims 7 and 8, the scope of these claims includes two different “at least one new document”, therefore, it is unclear which “said at least one new document” is referring to. Additionally, “inter alia” is traditionally defined as “among other things” which is indefinite claim language because the “other things” are not defined.
Regarding claim 15, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Additionally, limitations reciting a trademark (i.e., “Photoshop”), does not comply with 35 U.S.C.§ 112(b) (See MPEP§ 2173.05(u)).
Regarding claim 16, “the same content” lacks antecedent basis in the claims.
The dependent claims not mentioned inherit the deficiencies of their parent claims.
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 1-18, as best understood, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
The independent claim(s) recite(s) at least “review at least one new document comprising a new version associated by an individual end-user from among the plural end-users with an individual authorized document from among said plurality of authorized documents, by comparing the new document to the catalogue from among said plurality of catalogues which is associated in memory with said individual authorized document” and “generating at least one output facilitating editing of the new document for compliance with said regulation”. These limitations are construed as abstract ideas for being performable in the human mind or on paper. A human can certainly evaluate how a new document compares to an authorized document from a catalogue as well as generate an output such as annotations guiding (facilitating) editing the new document for compliance with a regulation on a paper version of a document.
This judicial exception is not integrated into a practical application because the additional limitations of “memory” and “at least one hardware processor” are merely generic computing components on which the instructions to implement the abstract idea are applied. The “a plurality of catalogues (aka "data catalogues") associated in memory with, and storing, in said memory, data regarding, a respective plurality of authorized documents, each having content known to be compliant with at least one regulation” is insignificant pre-solution activity as data storing and gathering. Additional limitations directed toward mere instructions to apply the exception to generic computing components and insignificant extra-solution activity, alone or in combination, do not integrate the judicial exception into a practical application (See MPEP§2106.05(f) and §2106.05(g)).
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements identified above, being directed toward mere instructions to apply the exception to generic computing components and insignificant extra-solution activity, alone or in combination, are well-understood routine and conventional, do not provide an inventive concept, and thus, do not amount to significantly more than the judicial exception. Therefore, the independent claims are directed toward ineligible subject matter.
Dependent claims 14 and 15 recite additional limitations that are mere instructions to apply the judicial exception to generic computing components, dependent claims 5-13 and 16 recite additional limitations that are construed as additional abstract ideas, dependent claims 2-4 recite additional limitations that are construed insignificant extra solution activity and, therefore, these dependent claims are also directed toward ineligible subject matter for similar reasons as outlined above.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-11, 13, 17, and 18, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark et al. (US 2015/0106378 A1, hereinafter “Clark”), and further in view of Fontecilla (US 11,321,538 B1, filed 10/15/2021).
Regarding claim 1, Clark teaches a system facilitating authoring of content, the system comprising:
a plurality of catalogues (aka "data catalogues") associated in memory with, and storing, in said memory, data regarding, a respective plurality of authorized documents, each having content known to be compliant with at least one regulation. More specifically, legacy documents of an enterprise (authorized documents) are scanned and analyzed to determine best practices and rules (regulations) for each category (plurality of data catalogs). Each category of documents has a profile of the clauses and groups of clauses which establish a norm (compliant with at least one regulation) against which proposed new documents may be scored. A new document is analyzed within its category. The higher the score the more compliant, the lower the score the less compliant (Clark, abstract, [0009]).
at least one hardware processor configured to interface with plural end-users and to review at least one new document comprising a new version associated by an individual end-user from among the plural end-users with an individual authorized document from among said plurality of authorized documents, by comparing the new document to the catalogue from among said plurality of catalogues which is associated in memory with said individual authorized document. More specifically, new (candidate) documents are scored and displayed with annotations for best practices, and variances from normal ranges of clauses and clause groups. A display provides the document transformed with annotations about the scores or rules triggered by each group of clauses and accepts comments and approval or objections to acceptance of the document (Clark, [0009]). At least Figures 8 and 9 describes the process of categorizing a new document (determining a catalog), scoring the clauses or groups of clauses within the document against the rules of the category (comparing the new document to the catalogue from among said plurality of catalogues), and visually annotating the document accordingly (Clark, Figures 8 and 9, [0038]-[0039]).
However, Clark may not explicitly teach every aspect of
generating at least one output facilitating editing of the new document for compliance with said regulation.
Fontecilla discloses an ensemble network of natural language processing (NLP) models configured to determine how well a given document addresses one or more requirements set forth in a requirement-specifying document. The similarity scores may then be used to determine whether the response document addresses the requirements. If the response document does not address particular requirements, then data flags may be generated to indicate that a corresponding section of the response document may need to be updated (Fontecilla, abstract). The requirements in the documents can be regulatory constraints (Fontecilla, col 3, line 62 - col 4, line 5). Graphical indicator 900 may indicate that a particular section (e.g., section 1) of second document 300 fails to comply with a requirement specified in the corresponding section of first document 200. Edits to response text 304a of first section 302a of second document 300 may be updated in response to display of graphical indicator 900 (Fontecilla, col 21, lines 8-42).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention given the teachings of Clark and Fontecilla that a system for facilitating authoring of documents and indicating compliance with regulations would include facilitating editing of a new document for compliance with said regulations. With Clark and Fontecilla disclosing indicating documents or portions of documents that do not comply with a rule or regulation, and with Fontecilla further facilitating the editing of the document based on the indicating, one of ordinary skill in the art of implementing a system for facilitating authoring of documents and indicating compliance with regulations would include facilitating editing of a new document for compliance with said regulations in order to allow the issues identified in Clark and Fontecilla to be corrected quickly to the benefit of a company or enterprise trying to lower their risk and liability across legal documents (Clark, [0002]-[0004]). One would therefore be motivated to combine these teachings as in doing so would create this method for system for facilitating authoring of documents and indicating compliance with regulations.
Regarding claim 2, Clark and Fontecilla teach a system according to claim 1 and also comprising automated functionality for creation, management, and storing of catalogues, thereby to provide said plurality of catalogues. More specifically, Legacy documents of an enterprise are scanned and analyzed to determine best practices and rules for each category (catalog) which are stored in at least databases 513 and 514 (Clark, [0006], [0035], [0037]).
Regarding claim 3, Clark and Fontecilla teach a system according to claim 1 wherein said output comprises at least one KPI. More specifically, the annotations are according to scores assigned to a document indicates its performance of compliance with regulations (Clark, abstract, [0006], [0019])
Regarding claim 4, Clark and Fontecilla teach a system according to claim 1 wherein said output comprises at least one error report. More specifically, the invention provides transformation of one or more documents into a report (Clark, [0019]-[0023]).
Regarding claim 5, Clark and Fontecilla teach a system according to claim 1 wherein each of the plural end-users is defined as a system user and at least one of the plural end-users is associated in memory with at least one catalogue C to which at least some other end-users from among the plural end-users do not have access, by creating a work environment in which the catalogue C is created and associating the plural end-users with different work environments in which different catalogues are created. More specifically, the system receives a document and categorizes it, subscribes to a best practices knowledge base, and grades and scopes the received document to display the variances from best practices to an operator in a workflow appropriate to the category of document / subject experts. Authority to access the category is determined (end user-associated with at least on catalogue) (Clark, [0005], [0022], [0023], [0031], [0033]).
Regarding claim 6, Clark and Fontecilla teach a system according to claim 1 wherein the hardware processor identifies phrases in at least one new document, and, when reviewing at least one new document, performs at least one phrase-level analysis of the new document on said phrases. More specifically, the analysis is clause based, defined as a group of words which are syntactically related, containing a subject and predicate, and forming part of a sentence or constituting a whole simple sentence (Clark, [0004]). Additionally, Fontecilla performs phrase-based analysis (Fontecilla, col 5, lines 42-61).
Regarding claim 7, Clark and Fontecilla teach a system according to claim 6 wherein, before performing said phrase-level analysis, the hardware processor merges at least one sequence of at least two consecutive phrases identified in said at least one new document, into a single phrase, and performs said phrase-level analysis on said single phrase inter alia. More specifically, the scoring is performed on a clause or group of clauses (Clark, abstract, [0006]). Additionally, a phrase can be one or more sentences or one or more words, n-grams, alphanumeric character strings, or symbols, or a combination thereof (Fontecilla, col 5, lines 42-61).
Regarding claim 8, Clark and Fontecilla teach a system according to claim 6 wherein, before performing said phrase-level analysis, the hardware processor splits at least one phrase identified in said at least one new document, into two consecutive phrases, and performs said phrase-level analysis on each of said two consecutive phrases inter alia. More specifically, the comparison process can involve tokenizing documents where text, including sentences or sets of words (phrases), is further segmented (split) (Fontecilla, col 5, lines 42-61; col 6, lines 38-46; col 7, line 8-29 and 40-62; col 10, lines 34-50).
Regarding claim 9, Clark and Fontecilla teach a system according to claim 1 wherein said hardware processor is configured for finding modular content in said at least one new document. More specifically, the comparison is based on sections or clauses (modular) of the documents (Clark, [0007], [0013], Fontecilla, abstract)
Regarding claim 10, Clark and Fontecilla teach a system according to claim 1 wherein said hardware processor is configured for detecting at least one of tables/graphs/blocks in the new document. More specifically, at least graphs can be determinized in the documents (Fontecilla, col 25, lines 52-67).
Regarding claim 11, Clark and Fontecilla teach a system according to claim 1 wherein said generating at least one output comprises highlighting at least one deviation between content of said at least one new document and said catalogue. More specifically, annotations highlight sections with compliance issues (Clark, [0007], [0023], [0045]-[0047], [0055]-[0056]).
Regarding claim 13, Clark and Fontecilla teach a system according to claim 11 wherein said document authorized system is also used by the plural end-users to author said plurality of authorized documents. More specifically, several client devices 104 (enitities) are part of the document system, and could be creators of the first documents (authorized documents) that the response (new) documents are compared to (Fontecilla, col 3, lines 52-64).
Regarding claim 17, this claim recites the method performed by the system of claim 1, therefore, the same rationale of rejection is applicable.
Regarding claim 18, this claim recites the computer program product, comprising a non-transitory tangible computer readable medium with instructions for performing the functions performed by the system of claim 1, therefore, the same rationale of rejection is applicable.
Claim(s) 12, 14, and 15, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark and Fontecilla, and further in view of Day-Richter et al. (US 9,336,137 B2, hereinafter “Day”).
Regarding claim 12, Clark and Fontecilla teach a system according to claim 1, however, may not explicitly teach every aspect of wherein the system is in data communication with at least one document authoring system used by the plural end-users to author the at least one new document.
Day discloses a collaborative development service that provides a platform to use a respective software application to create and edit documents (Day, col 4, lines 54-58). The collaborative development service enables developers to develop software applications that provide services relating to content types, including, without limitation, word processing services with respect to text documents, spreadsheet applications, drawing tools, photo or image editing applications, video editing applications, design tools, software development tools, audio or music editing applications (Day, col 4, lines 33-39). A software application is created for use in relation to a word processing application, and enables users to create and edit text documents (Day, col 7, lines 42-44). The collaborative development service receives instructions from user devices, identifies conflicting changes to a document, determines any necessary transformed operations, and transmits to the user devices requests to apply the transformed operations to the devices' respective visual representations of the document, in real-time, or substantially in real-time, to provide to users a real-time collaborative editing experience (Day, col 15, lines 29-38). The collaborative development service provides an auditing service whereby specified documents and data may be analyzed based on criteria specified by the client to determine whether the management of the documents and data are in compliance with the client's policies, or whether the documents or data are in compliance with any other rules or regulations (Day, col 28, lines 29-35).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention given the teachings of Clark and Fontecilla with Day that a system for facilitating authoring of documents and indicating compliance with regulations would include wherein the system is in data communication with at least one document authoring system used by the plural end-users to author the at least one new document. With Clark, Fontecilla, and Day disclosing determining whether documents or portions of documents deviate from with a standard, rule, or regulation, and with Day further suggesting a collaborative system with multiple users editing documents in real-time, one of ordinary skill in the art of implementing a system for facilitating authoring of documents and indicating compliance with regulations would include wherein the system is in data communication with at least one document authoring system used by the plural end-users to author the at least one new document in order to allow for collaboration between users with more input when ensuring document compliance with regulations. One would therefore be motivated to combine these teachings as in doing so would create this method for system for facilitating authoring of documents and indicating compliance with regulations.
Regarding claim 14, Clark and Fontecilla with Day teach a system according to claim 12 wherein said document authoring system comprises a word processor. More specifically, the collaborative development service utilizes at least word processing services with respect to text documents and photo or image editing applications (Day, col 4, lines 33-39).
Regarding claim 15, Clark and Fontecilla with Day teach a system according to claim 12 wherein said document authoring system comprises image editing software such as but not limited to Photoshop. More specifically, the collaborative development service utilizes at least word processing services with respect to text documents and photo or image editing applications (Day, col 4, lines 33-39).
Claim(s) 16, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Clark and Fontecilla, and further in view of Gao et al. (US 2021/0294974 A1, published 09/23/2021, hereinafter “Gao”).
Regarding claim 16, Clark and Fontecilla teach a system according to claim 1, however, may not explicitly teach every aspect of wherein said comparing the new document to the catalogue comprises determining word order in the new document, and then comparing order of content in the new document to order of the same content in the catalogue.
Gao discloses methods for detecting deviations between documents and portions thereof, extracting information from text and detecting deviations between obligations (Gao, abstract). The method includes comparing an agreed upon standard (regulation catalogue) document with a review (new) document (Gao, [0003], [0012]). The system identifies the ordering of terms (words), phrases, sentences, clauses and/or paragraphs in the standard and review documents (Gao, abstract, [0024]-[0026], [0080]-[0081], [0135]-[0136], [0159], [0161]) and utilizes the different ordering during the comparison of the two documents (Gao, [0088]).
It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention given the teachings of Clark and Fontecilla with Gao that a system for facilitating authoring of documents and indicating compliance with regulations would include comparing the word order in the new document with the order of the same content of the catalogue. With Clark, Fontecilla, and Gao disclosing indicating documents or portions of documents that deviate from with a standard, rule, or regulation, and with Gao further suggesting the comparison of a standard (compliant) document with a new document includes the determination of the ordering of at least phrases or terms in each document, one of ordinary skill in the art of implementing a system for facilitating authoring of documents and indicating compliance with regulations would include comparing the word order in the new document with the order of the same content of the catalogue in order to allow for the determination that the content being in a different order does not necessarily result in a conclusion of non-compliance. One would therefore be motivated to combine these teachings as in doing so would create this method for system for facilitating authoring of documents and indicating compliance with regulations.
Pertinent Prior Art
The prior art made of record on form PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Applicant is required under 37 C.F.R. § 1.111(c) to consider these references fully when responding to this action.
Karageorgos (US 2010/0180213 A1) – determining document compliance with a definition of content section and content sequence rules.
Parikh (US 2020/0394361 A1) – determining document compliance based on a sequence of content.
Joseph (US 2023/0128589 A1) – determining policy violations of a set of documents.
Cornelia (US 6,065,026 A) – generating a report on documents with flagged compliance text.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK F RIEGLER whose telephone number is (571)270-3625. The examiner can normally be reached M-F 9:30am-6:00pm, ET.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PATRICK F RIEGLER/ Primary Examiner, Art Unit 2171
Prosecution Insights