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 .
This is a response to U.S. Patent Application No. 18/809,768 filed on 08/20/2024 in which Claims 1 – 24 were filed for examination. This U.S. Patent Application is a Continuation of U.S. 17/380,902 which is now U.S. Patent No. 12,067,355.
Status of the Claims
Claims 1 – 24 are rejected on the ground of nonstatutory double patenting and Claims 1 – 24 are rejected under 35 U.S.C. 103.
Examiner Note
The Examiner cites particular columns, line numbers and/or paragraph numbers in the references as applied to the claims below for the convenience of the Applicant(s). Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/27/2025 and 05/20/2026 have been entered and considered by the examiner.
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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/patent/patents-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 www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 – 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 24 of U.S. Patent No. 11,068,644. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1 – 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 24 of U.S. Patent No. 12,067,355. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant Application
No. 18/809,768
U.S. Patent
No. 12,067,355
U.S. Patent
No. 11,068,644
1, 9, 17
1, 9, 17
1, 9, 17
2, 10, 18
2, 10, 18
2, 10, 18
3, 11, 19
3, 11, 19
3, 11, 19
4, 12, 20
4, 12, 20
4, 12, 20
5, 13, 21
5, 13, 21
5, 13, 21
6, 14, 22
6, 14, 22
6, 14, 22
7, 15, 23
7, 15, 23
7, 15, 23
8, 16, 24
8, 16, 24
8, 16, 24
Regarding Claims 1 – 24, U.S. Patent No. 11,068,644 recites a method, system and medium for creating a customized insurance form. Said method, system and medium of U.S. Patent 11,068,644 being capable of executing every step carried out by the instant application. One of ordinary skill in the art before the effective filling date would conclude that the invention defined in the Claims at issue would have been an obvious variation of the invention as defined in U.S. Patent No. 11,068,644.
Regarding Claims 1 – 24, U.S. Patent No. 12,067,355 recites a method, system and medium for creating a customized insurance form. Said method, system and medium of U.S. Patent 12,067,355 being capable of executing every step carried out by the instant application. One of ordinary skill in the art before the effective filling date would conclude that the invention defined in the Claims at issue would have been an obvious variation of the invention as defined in U.S. Patent No. 12,067,355.
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 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.
Claims 1 – 24 are rejected under 35 U.S.C. 103 as being unpatentable over Hazard (US 2013/0036348) (cited in IDS dated 02/27/2025) in view of Dehlinger (US 2006/0259475) (cited in IDS dated 02/27/2025).
Regarding Claim 1, Hazard teaches a system for creating customized insurance forms (See Hazard’s Abstract and par 0005), comprising:
a computer system having a memory, a processor, and a user interface (See Hazard’s par 0130 and Fig. 15); and
a custom forms software application stored in the memory and executed by the processor, the custom forms software application including:
a form search module retrieving at least one pre-defined form from a database and displaying the form to the user via the user interface (Hazard in par 0040 and Fig. 1A – 1B, teaches that a plurality of pages is presented to the user via the presentation device 154. Presenting a data page may also include identifying a data page that has been created by a user (e.g., using a word processing or text entry application. Hazard in par 0046 – 0047, further teaches that the user selects a form page and a list of data pages to be used in assembling the document. Hazard in par 0080, and Fig. 11, further teaches that when a user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented);
a form editor module for allowing the user to edit the pre-defined form using the user interface (Hazard in par 0033 – 0035, teaches that a form page includes field indicators that are used during document generation to populate the data pages with content. A field indicator may be associated with specific content data on the form page; throughout the data pages, where the field indicator appears, a component of the system may replace the field indicator with content identified on the form page. Hazard in par 0080 and Fig. 11, further teaches that when the user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented. The form data presented in the form data region 1102 includes both field indicators such as the field indicator 1104 and text content such as the text content 1106. The display 1100 also includes a recommended clauses region 1108which provides a list of recommended clauses to the user); and
a clause searching/filtering module allowing the user to locate one or more desired clauses from the database and allowing the user to insert the one or more desired clauses into the pre-defined form in order to create a customized form (Hazard in par 0033 – 0035, teaches that a form page includes field indicators that are used during document generation to populate the data pages with content. A field indicator may be associated with specific content data on the form page; throughout the data pages, where the field indicator appears, a component of the system may replace the field indicator with content identified on the form page. Users can organize, customize and generate documents with great flexibility, according to their needs. Hazard in par 0080 and Fig. 11, further teaches that when the user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented. The form data presented in the form data region 1102 includes both field indicators such as the field indicator 1104 and text content such as the text content 1106. The display 1100 also includes a recommended clauses region 1108 which provides a list of recommended clauses to the user. The recommended clauses region 1108 also includes a search button 1114 which a user may select to search the available clauses)
Accordingly, Hazard teaches the use of a list of recommended clauses, wherein the clauses includes a rating associated with the clauses (See Hazard par 0080).
However, Hazard does not specifically disclose how the list of clauses is created, thus Hazard does not specifically disclose wherein the custom forms software application integrates with one or more of a customer system, a document management system, or a cloud computing system; ingests a plurality of insurance-related forms obtained from the one or more of the customer computer system, the document management system, or the cloud computing system; decomposes the plurality of insurance-related forms into a plurality of clauses; applies a search tag to each of the plurality of clauses; and stores the plurality of clauses and the search tags in the database.
Dehlinger in par 0032 and Fig. 4A - 4B, show in flow diagram form, operations in processing citation-rich documents, such as a legal document, to form the phrase-ID table, record-ID table, and tag-ID table in the database. Dehlinger in par 0080 – 0095 and Fig. 4A, further teaches a flow diagram of steps employed by the system in extracting tags, e.g., citations, and associated phrases, e.g., statements, from each of a plurality of citation-rich records, e.g., document 62. The total number of records to be processed may be quite large. The first step in the record processing is to identify citation, at 76. As shown at 78 in figure 4A, the program then considers the sentence that immediately precedes the citation. If the sentence is a complete sentence, the sentence us extracted and assigned to the “statement" phrase for the citation or citations that it precedes, as a 84. As indicated at 84 in the figure, the sentence (statement or phrase) is extracted, assigned a phrase ID number at 94 and the phrase text is then stored, along with the PID and RID, at 96. Once the TID has been identified, the phrase ID (PID), tag ID (TID), and record ID (RID) are added to table 54 in constructing the phrase –ID table in the system. Dehlinger in par 0115 – 0122, further teaches the searching for a phrase in response to a user query. The system searches the database and returns phrases that have the closest (highest-ranking) word match with that query, along with pertinent tag information associated with that statement. The user may ask the program to display cites (tags) ranked either by phrase word-match score, by citation date, or by number of records that contain the cites. The system can display the search results in a variety of ways, depending on user selection. For example: 1. top ranked phrases, including phrases that may be associated with the same tag, 2. Top-ranked phrases for each tag, 3. top-ranked phrases and tags, arranged to place the most recent citations first and 4. Top-ranked phrases and citations, tags, arranged to place the tags with the highest record occurrence first.
Dehlinger in par 0157 – 0160 and Fig. 15, further teaches a graphical interface for record searching. Once a query is entered in box 312, the user clicks in the “add query” button. To start the search the user clicks on the “Search” button, which initiates the phrase word-match search. When this initial search is completed, the top-matched phrases are displayed on statement box 316, which also shows the tag ID for each statement. By clicking on a tag in box 316, the program will show all of the phrases for that tag in box 318 for “expanded statement.”
Accordingly, Hazard teaches a method that allows the creation of a document by using clauses from a database, while Dehlinger teaches the creation of a database containing a plurality of phrases obtained from different document.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filling date to utilize the teaching of Dehlinger as the teaching in Hazard in order to provide the user of Hazard with a database that contains a searchable table with clauses from a plurality of sources. The motivation for doing so would have been to provide to the user an efficient method to create a document by easily obtaining phrases from a plurality of document, thus improving efficiency and collaboration between members of a community (See Hazard’s par 0104 and Dehlinger’s par 0003, 0155).
Regarding Claim 2, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 1. Dehlinger further teaches:
wherein the clause searching/filtering module searches for desired clauses from the database using the search tags (Dehlinger in par 0032 and Fig. 4A - 4B, show in flow diagram form, operations in processing citation-rich documents, such as a legal document, to form the phrase-ID table, record-ID table, and tag-ID table in the database. Dehlinger in par 0080 – 0095 and Fig. 4A, further teaches a flow diagram of steps employed by the system in extracting tags, e.g., citations, and associated phrases, e.g., statements, from each of a plurality of citation-rich records, e.g., document 62. The total number of records to be processed may be quite large. The first step in the record processing is to identify citation, at 76. As shown at 78 in figure 4A, the program then considers the sentence that immediately precedes the citation. If the sentence is a complete sentence, the sentence us extracted and assigned to the “statement" phrase for the citation or citations that it precedes, as at 84. As indicated at 84 in the figure, the sentence (statement or phrase) is extracted, assigned a phrase ID number at 94 and the phrase text is then stored, along with the PID and RID, at 96. Once the TID has been identified, the phrase ID (PID), tag ID (TID), and record ID (RID) are added to table 54 in constructing the phrase –ID table in the system. Dehlinger in par 0115 – 0122, further teaches the searching for a phrase in response to a user query. The system searches the database and returns phrases that have the closest (highest-ranking) word match with that query, along with pertinent tag information associated with that statement. The user may ask the program to display cites (tags) ranked either by phrase word-match score, by citation date, or by number of records that contain the cites. The system can display the search results in a variety of ways, depending on user selection. For example: 1. top ranked phrases, including phrases that may be associated with the same tag, 2. Top-ranked phrases for each tag, 3. top-ranked phrases and tags, arranged to place the most recent citations first and 4. Top-ranked phrases and citations, tags, arranged to place the tags with the highest record occurrence first.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filling date to utilize the teaching of Dehlinger as the teaching in Hazard in order to provide the user of Hazard with a database that contains a searchable table with clauses from a plurality of sources. The motivation for doing so would have been to provide to the user an efficient method to create a document by easily obtaining phrases from a plurality of document, thus improving efficiency and collaboration between members of a community (See Hazard’s par 0104 and Dehlinger’s par 0003).
Regarding Claim 3, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 1. Hazard further teaches:
wherein the system monitors for a change made by the user to one or more forms stored in the database (Hazard in par 0076 and Fig. 8, further teaches that the versioning method illustrated in Fig. 8, includes one or more notifications or requests for permission from one or more users or administrators of the system 150.or example, the assembly processor 152, upon creating or detecting a new version of a data page, may take one or more actions including notifying the user, requesting permission of the user before replacing the data page in the ordered list with the more current version, and notifying one or more past users of the data page. Hazard in par 0106, further teaches that a user who has access to data that has been modified in one database may receive an alert of the modification and have the option of synchronizing his or her copy of the data to the modified version. Hazard in par 0114, further teaches that the document tagging engine 1308 generates an alert informing a member of the community about a new modification associated with a previously edited component).
Regarding Claim 4, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 3. Hazard further teaches:
wherein the system identifies one or more additional forms that are related to the one or more forms changed by the user (Hazard in par 0076, and Fig. 8, teaches that if the identified data page has not been edited, the assembly processor 152 determines whether a more current version of the data page is available at the step 808. This may occur, for example, when the legal department of a corporation uploads an updated set of boilerplate clause data pages to the document assembly system 150, with similar or different titles to associated existing boilerplate clause data pages and with new or revised document. If the assembly processor 152 identifies that a more current version of the data page is available at the step 808, the assembly processor 152 executes the step 810, replacing the data page in the ordered list with the more current version. The versioning method illustrated in Fig. 8, includes one or more notifications or requests for permission from one or more users or administrators of the system 150. For example, the assembly processor 152, upon creating or detecting a new version of a data page, may take one or more actions including notifying the user, requesting permission of the user before replacing the data page in the ordered list with the more current version, and notifying one or more past users of the data page).
Regarding Claim 5, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 4. Hazard further teaches:
wherein the system generates an alert if the change made by the user impacts the one or more additional forms, and transmits the alert to the user (Hazard in par 0076 and Fig. 8, further teaches that the versioning method illustrated in Fig. 8, includes one or more notifications or requests for permission from one or more users or administrators of the system 150. For example, the assembly processor 152, upon creating or detecting a new version of a data page, may take one or more actions including notifying the user, requesting permission of the user before replacing the data page in the ordered list with the more current version, and notifying one or more past users of the data page. Hazard in par 0106, further teaches that a user who has access to data that has been modified in one database may receive an alert of the modification and have the option of synchronizing his or her copy of the data to the modified version. Hazard in par 0114, further teaches that the document tagging engine 1308 generates an alert informing a member of the community about a new modification associated with a previously edited component).
Regarding Claim 6, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 1. Hazard further teaches:
wherein the system displays the pre-defined form in a first display portion of the user interface, and displays the one or more desired clauses in a second display portion of the user interface (Hazard in par 0080 and Fig. 11, further teaches that when the user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented. The form data presented in the form data region 1102 includes both field indicators such as the field indicator 1104 and text content such as the text content 1106. The display 1100 also includes a recommended clauses region 1108 which provides a list of recommended clauses to the user).
Regarding Claim 7, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 6. Hazard further teaches:
wherein the user can click on one of the one or more desired clauses in the second display portion to cause the one of the one or more displayed clauses to be inserted into the pre-defined form at a desired location of the pre-defined form (Hazard in par 0033 – 0035, teaches that a form page includes field indicators that are used during document generation to populate the data pages with content. A field indicator may be associated with specific content data on the form page; throughout the data pages, where the field indicator appears, a component of the system may replace the field indicator with content identified on the form page. Users can organize, customize and generate documents with great flexibility, according to their needs. Hazard in par 0080 and Fig. 11, further teaches that when the user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented. The form data presented in the form data region 1102 includes both field indicators such as the field indicator 1104 and text content such as the text content 1106. The display 1100 also includes a recommended clauses region 1108 which provides a list of recommended clauses to the user. The recommended clauses region 1108 also includes a search button 1114 which a user may select to search the available clauses).
Regarding Claim 8, Hazard in view of Dehlinger teaches the limitations contained in parent Claim 1. Hazard further teaches:
wherein the system automatically recommends a clause stored in the database for insertion into the pre-defined form (Hazard in par 0080 and Fig. 11, further teaches that when the user selects the tab 1026 of the display 1000, the display 1100 of figure 11 is presented. The display 1100 includes a form data region 1102 in which the form data is presented. The form data presented in the form data region 1102 includes both field indicators such as the field indicator 1104 and text content such as the text content 1106. The display 1100 also includes a recommended clauses region 1108 which provides a list of recommended clauses to the user).
Regarding Claim 9, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 1. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 9, as indicated in the above rejection of Claim 1.
Regarding Claim 10, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 2. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 10, as indicated in the above rejection of Claim 2.
Regarding Claim 11, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 3. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 11, as indicated in the above rejection of Claim 3.
Regarding Claim 12, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 4. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 12, as indicated in the above rejection of Claim 4.
Regarding Claim 13, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 5. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 13, as indicated in the above rejection of Claim 5.
Regarding Claim 14, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 6. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 14, as indicated in the above rejection of Claim 6.
Regarding Claim 15, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 7. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 15, as indicated in the above rejection of Claim 7.
Regarding Claim 16, this Claim merely recites a method for creating a customized insurance form, comprising steps as similarly executed by the system of Claim 8. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 16, as indicated in the above rejection of Claim 8.
Regarding Claim 17, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 1. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 17, as indicated in the above rejection of Claim 1.
Regarding Claim 18, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 2. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 18, as indicated in the above rejection of Claim 2.
Regarding Claim 19, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 3. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 19, as indicated in the above rejection of Claim 3.
Regarding Claim 20, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 4. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 20, as indicated in the above rejection of Claim 4.
Regarding Claim 21, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 5. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 21, as indicated in the above rejection of Claim 5.
Regarding Claim 22, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 6. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 22, as indicated in the above rejection of Claim 6.
Regarding Claim 23, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 7. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 23, as indicated in the above rejection of Claim 7.
Regarding Claim 24, this Claim merely recites a non-transitory, computer-readable medium having instructions stored thereon which, when executed by a computer system, cause the computer system to execute steps for creating a customized insurance form as similarly recited in Claim 8. Accordingly, Hazard in view of Dehlinger discloses/teaches every limitation of Claim 24, as indicated in the above rejection of Claim 8.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ARIEL MERCADO VARGAS whose telephone number is (571)270-1701. The examiner can normally be reached M-F 8:00am - 4:00pm.
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/ARIEL MERCADO-VARGAS/Primary Examiner, Art Unit 2118
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