Detailed Action
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is responsive to the 12/02/2024 communication(s). As per the claims filed 9/26/2024:
Claims 1-10 are pending.
Claim(s) 1 is/are independent claim(s).
Note Regarding Prior Art
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. 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.
Note Regarding AIA Status
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.
Specification
The use of the term “WORD” and “word’, which is a trade name or a mark used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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 1-10 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.
Claim 1 contains the trademark/trade name “word”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a text editing software application and, accordingly, the identification/description is indefinite.
Claim 1 recites the limitation “a word content control” it is unclear whether the word content control refers to functionality provided by “WORD” the application and if so what type of functionality or if it is a generic text control. For purposes of examination, the examiner interprets it as word the application functionality defined by the user as defined by claim 3.
Claim 6 recites the language “(union: up to down, join: left to right)” it is unclear whether the language refers to particular instructions or mere examples of functionality.
Claim 8 recites the language: “with one click” it is unclear what the “one click” limitation refers to. From the claim language, it could be that the synchronizing occurs in response to one click, or that a CSR is provided in response to one click. In either case, it is unclear what is being “clicked” in order to generate the response.
Claim 9 recites the language “with one click” it is unclear what is being “clicked” in order to update new data to the CSR.
Claims 2-9 are rejected based on their dependency on a rejected base claim.
Allowable Subject Matter
Claims 1-10 would be allowed if amended to overcome the 35 USC 112(b) rejections set forth above.
The following is a statement of reasons for the indication of allowable subject matter:
The independent claims are allowable over the US Patent Application 2025/02110154 (Hafen) US Patent No. 11232871 (Gassner), Patent No. 8321834 (Baker), because, although each of the cited prior art teaches editing clinical trial data including sorting and filtering information. However, the prior art, alone or in any reasonablecombination failed to disclose "(i) uploading TFL source data through the word plugin from a source file; (ii) reading metadata of the TFL source data from a word content control, wherein the metadata stores various configurations of TFL; (iii) generating new in-text TFL from the TFL source data with the TFL metadata; (iv) updating the new in-text TFL content to correspond to the word content control; (v) configurating the word content control in (iv); and (vi) filtering and sorting the new in-text TFL content based on the configuration of (v)." as recited in claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOWARD CORTES whose telephone number is (571)270-1383. The examiner can normally be reached on M-F, 8:00 am - 5:00 pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scott T Baderman can be reached on (571)272-3644. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOWARD CORTES/ Primary Examiner, Art Unit 2118
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