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
Claims 1-18 are pending in this application.
Double Patenting Rejection
Applicant’s arguments, see page 7, line 6 through line 17, filed February 11, 2026, with respect to the rejection of claims 1-18 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.11,475,158, have been fully considered and are persuasive. The rejection of claims 1-18 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.11,475,158 has been withdrawn.
Applicant’s arguments, see page 7, line 6 through line 17, filed February 11, 2026, with respect to the rejection of claims 1-18 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.10,867,073, have been fully considered but are not persuasive.
Applicant argues that “The applicant notes that the instant claim 1, unlike the allowed claims of US 10,867,073 … includes a stack update trainer … Therefore, the two references do not satisfy the one-way test of distinctiveness. See MIPEP 804 Section II.B.4”, the examiner respectfully disagrees. Allowed claims of U.S. Patent No.10,867,073 do indeed include a stack update trainer. For example, claim 1 expressly recites “to perform update training of the trained master DL stack” and claim 2 recites “dedicated DL stack trainer, under the organization's control, and allowing the organization to perform the update training without the organization forwarding its examples of the organization sensitive data in images to a provider that performed the pre-training of the master DL stack; and wherein the dedicated DL stack trainer is configurable to generate the respective updated DL stack”. Many other allowed claims of U.S. Patent No.10,867,073 recite “perform update training of the trained master DL stack”.
Applicant argues that “The applicant notes that the instant claim 1 … Also, receiving element expressly excludes a receiving images of the organization-specific examples. Therefore, the two references do not satisfy the one-way test of distinctiveness. See MIPEP 804 Section II.B.4”, the examiner respectfully disagrees. While claim 1 of issued U.S. Patent No. 10,867,073 includes additional limitations that are not set forth in the instant claim 1, the use of transitional term "comprising" in the instant claim 1 fails to preclude the possibility of additional elements, so that instant claim 1 fails to define an invention that is patentably distinct from claim 1 of issued U.S. Patent No. 10,867,073.
Furthermore, if a claimed invention in the application would have been obvious over a claimed invention in the patent, there would be an unjustified timewise extension of the patent and a nonstatutory double patenting rejection is proper.
The rejection of claims 1-18 on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.10,867,073 is both proper and reasonable and is hereby maintained.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10,867,073. Although the conflicting claims are not identical, they are not patentably distinct from each other because both sets of claims are directed towards the common subject matter.
The claims in the present application define the invention differently from the claims in the issued U.S. Patent No. 10,867,073, however they are not patentably distinguishable from the claims in the other copending applications. In re White et al., 160 USPQ 417, In re Thorington et al., 163 USPQ 644.
For example, comparing representative claim 1 of the present application with representative claim 1 of issued U.S. Patent No. 10,867,073. Claim 1 of the present application recites: A computer-implemented method of customizing a deep learning stack to detect organization sensitive data in images, referred to as image-borne organization sensitive documents, and protecting against loss of the image-borne organization sensitive documents (Claim 1 of issued U.S. Patent No. 10,867,073 recites: A method of customizing a deep learning stack to detect organization sensitive data in images, referred to as image-borne organization sensitive documents, and protecting against loss of the image-borne organization sensitive documents, including: pre-training a master deep learning stack by forward inference and back propagation using labelled ground truth data for image-borne sensitive documents and examples of other image documents); distributing a trained master deep learning stack with stored parameters to a plurality of organizations (Claim 1 of issued U.S. Patent No. 10,867,073 recites: distributing the trained master deep learning stack with the stored parameters to a plurality of organizations); providing at least some of the organizations with a deep learning stack update trainer, under the organizations’ control, configured to save, during generation of updated deep learning stacks, non- invertible features derived from images of organization-sensitive training examples, ground truth labels for the images, and parameters of the updated deep learning stacks (Claim 1 of issued U.S. Patent No. 10,867,073 recites: wherein the deep learning stack includes at least a first set of layers closer to an input layer and a second set of layers further from the input layer, further including the first set of layers being pre-trained to perform image recognition before exposing the second set of layers of the deep learning stack to the labelled ground truth data for the image-borne sensitive documents and examples of other image documents,
storing parameters of the trained master deep learning stack for inference from production images); receiving, from at least one of the deep learning stack update trainers, organization-specific examples including the non-invertible features and the ground truth labels, without receiving images of the organization-specific examples (Claim 1 of issued U.S. Patent No. 10,867,073 recites: whereby the organizations use respective updated deep learning stacks to classify at least one production image by inference as including an organization sensitive document); and using the received organization-specific examples to update the trained master deep learning stack (Claim 1 of issued U.S. Patent No. 10,867,073 recites: permitting the organizations to perform update training of the trained master deep learning stack using at least examples of the organization sensitive data in images and to save parameters of updated deep learning stacks).
As the comparison shows the claims recite common subject matter, and the differences relate to variations of the claimed limitations, and the processing is carried out on the data and/or elements in no way affects how the data would be received from an input, processed and output within the context of the claims. Therefore, the substitution of the different variations would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. While claim 1 of issued U.S. Patent No. 10,867,073 includes additional limitations that are not set forth in the instant claim 1, the use of transitional term "comprising" in the instant claim 1 fails to preclude the possibility of additional elements, so that instant claim 1 fails to define an invention that is patentably distinct from claim 1 of issued U.S. Patent No. 10,867,073. Furthermore, the elements of instant claim 1 are fully anticipated by the patented claim, and anticipation is “the ultimate or epitome of obviousness (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Dailey, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)).
Claims 2-18 of the present application recite limitations which are in most cases word for word the same limitations as found in claims 2-21 respectively of issued U.S. Patent No. 10,867,073.
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 extension fee 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jose L. Couso whose telephone number is (571) 272-7388. The examiner can normally be reached on Monday through Friday from 5:30am to 1:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Bella, can be reached on 571-272-7778. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/JOSE L COUSO/Primary Examiner, Art Unit 2667
February 18, 2026