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 .
Applicant’s Response to the Non-Final Office Action
Contingent Language
The non-final Office action (“NFOA”) described that method claim 11 included non-limiting contingent language. See NFOA at 3. The amendment of claim 11 overcomes this issue.
35 U.S.C. § 112(b) Rejection
Claims 1-11 were previously rejected under §112(b). See NFOA at 5-7. The applicant’s amendments overcome the issues described in the NFOA. But the amended claims now recite “modifying … storage of the history data record.” This language is indefinite, as described in the new §112(b) rejections below.
35 U.S.C. § 101 Rejection
Claims 1-11 were rejected under §101 for being drawn to an abstract idea without significantly more. NFOA at 3-6. In response to the amendments and the applicant’s arguments (see Remarks at 13-20), this rejection is withdrawn. The claims, as now presented, integrate any mental process into a practical application. While the amended claims still involve mental processes such as editing and updating information (see NFOA at 3-6), the claims now reflect more than “a drafting effort to monopolize” the judicial exception. MPEP 2106.04(d). Limitations that fall outside of the abstract idea and, when considered as a whole, integrate the abstract idea into a practical application, include: “receiving, via the operation unit, editing information for an editing operation performed on the object within the area displayed on the display”… “receiving, via the operation unit, information of a condition change operation” … “modifying, in response to the updating the attribute, storage of the history data record; and sending, to the operation unit, a change notification comprising a description of the condition change operation.” These additional elements result in the abstract idea being used in a “meaningful way beyond generally linking” the abstract idea to a certain environment. MPEP 2106.04(I)(d).
35 U.S.C. § 103 Rejections
While new grounds of rejection are presented below, certain of applicant’s arguments relate to grounds that are maintained in this Office action. These arguments are addressed here.
The applicant argues that “nothing in Tanaka teaches ‘updating, in response to the information of the condition change operation, the attribute of the editing operation’ as recited in claim 1.” Remarks at 13. The NFOA addressed a similar limitation by relying on Marston, not Tanaka. See NFOA at 8-9. Marston discloses that comments (i.e., editing operations) that are associated with a document have a history data record associated with them, including a data entry describing the retention period (i.e., an attribute of an editing operation) of the comment. See Marston ¶¶ 59-63. An administrator is able to change (via a condition change operation) properties of this record, including the comment’s retention period (i.e. the attribute of the editing operation). Id. and NFOA at 9. This meets the claim language requiring “updating, in response to the information of the condition change operation, the attribute of the editing operation.”
The applicant’s remarks relating to the new limitations in claim 1 are moot in view of the new grounds of rejection presented below.
Official notice was taken in the rejections of claims 3 and 10. NFOA at 9-11. This assertion was not traversed, rendering the asserted subject matter admitted prior art. See MPEP 2144.03(C).
Claim Interpretation
New claim 14 includes language that is not included in its BRI. Claim 14 depends from claim 1, and includes all limitations from that claim. Claim 14 includes language describing the “condition change operation” when that operation includes “a change in a permission setting for deletion of the history data record.” But claim 1 does not require the condition change operation to include “a change in a permission setting for deletion of the history data record.” Instead, claim 1 presents a Markush-style grouping requiring the condition change operation to include “at least one of” two options: a change to a retention period, or a change in a permission setting. The BRI of claim 1 only requires that the condition change operation includes a change to the retention period. This is the BRI of claim 1 that is addressed in the §103 rejections below. Claim 14 inherits this language and this scope, and the language in claim 14 further describing a non-required option from claim 1 does not limit the BRI of the claim.
Claim 15 similarly depends from claim 1 and is indefinite for reasons given in the §112(b) rejection below.
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 1-15 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.
Claims 1 and 11 include the limitation “modifying, in response to the updating the attribute, storage of the history data record.” All other claims of this application depend from claims 1 and 11 and inherit this limitation. This limitation renders the scope of these claims indefinite.
It is not clear what is actually required by “modifying … storage of the history data record.” This step is performed “in response to updating the attribute.” The “attribute” is a part of the stored “history data record.” Therefore, when the “attribute” is updated, the stored history data record is also updated. The act of updating the attribute would appear to already modify the storage of the history data record, because updating the attribute modifies the stored history data record. In this case, the entire “modifying” limitation would not appear to meaningfully limit the claim. This limitation could alternatively be interpreted as merely reciting that the stored history data record is updated to reflect the updated attribute. It is not clear if this is included in the scope of this language. The specification also provides another interpretation: namely, that modifying storage of the history data record entails deleting the history data record. See e.g. Spec. ¶ 57. It is not clear if the scope of the “modifying” limitation is confined to deleting expired entries, or if its scope also includes the interpretations described above. The specification does not use the language “modifying … storage of the history data record” and does not provide clear guidance on the interpretation of this claim limitation.
Claims 6-10 are additionally rejected under § 112(b). Claims 6, 7, and 10 recite the term “the modifying the history data record.” This phrase lacks antecedent basis in the claim. Claim 1, from which these claims depend, recite “modifying storage of the history data record.” It is unclear if the language in claims 6-10 refers to this step.
Claim 15 is additionally rejected under §112(b). Claim 15 depends from claim 1. Claim 1 presents a Markush-style grouping describing that the condition change operation includes “at least one of” two options: a change to a retention period, or a change in a permission setting. The BRI of this language in claim 1 is that only one of these options is required to be included in claim scope. See MPEP 2117. Claim 15 depends from claim 1 and incorporates this language and interpretation. But claim 15 also recites that both options from this group are required. Therefore claim 15 recites, in a single claim, that the change operation can be one of a change to a retention period or a change in a permission setting, while simultaneously requiring that the change condition be both. This is indefinite.
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.
Claims 1-3, 6, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Marston, US 20060294191, in view of Tanaka, US 20150058717, and further in view of P et al., US 20190384829.
Claim 1: Tanaka discloses a non-transitory computer readable storage medium storing an information management program executable by a computer of an information editing system, the information editing system including a display and an operation unit and being configured to edit an object within an area displayed on the display via the operation unit (¶ 51), the information management program causing the computer to perform operations comprising:
receiving, via the operation unit, editing information for an editing operation performed on the object within the area displayed on the display (Edits are received for various editing operations on a displayed document or image. ¶¶ 45-48.);
generating, based on the editing information, a history data record including: an attribute of the editing operation; and a date and time associated with the performance of the editing operation (Fig. 3 – the history data record includes attributes of the edit, and time and date of the edit. ¶¶ 63-65.);
storing the history data record (¶¶ 63-65 and Fig. 3).
Tanaka does not disclose, but Marston discloses:
receiving, via an operation unit, information of a condition change operation that includes a change to a retention period for a history data record; updating, in response to the information of the condition change operation, an attribute of the editing operation (Comments (i.e., editing operations) associated with a document are stored in a database. ¶¶ 60-63. The comments in this database are history data records that describe the comments, or edits to the document. An administrator can change properties of the comments, including their retention periods. ¶¶59-60. This input from the administrator is a condition change operation that updates an attribute (a retention period) of the comment. It is noted that the BRI of the term “attribute” includes the retention period of the editing operation.);
modifying, in response to the updating the attribute, storage of the history data record (When the retention period is modified, the history data record is modified, because the history data record includes the retention period. See Marson ¶¶ 59-63. Because the history data record is modified, the “storage of the history data record” is modified. See the §112(b) rejection above for a discussion of the interpretation of this claim language. Alternatively, if this limitation is understood to require deleting the history data record in response to updating the retention period, this is taught in Marston. Marston describes deleting comments whose retention periods are no longer valid. Id. ¶ 59. Marston also describes that the retention periods can be modified. Id. The POSITA would understand this to inherently teach that when the modification of a retention period results in the comment becoming expired, the comment will be deleted.).
It would have been obvious to a skilled artisan before the effective filling date of the claimed invention to modify Tanaka with teachings found in Marston. The rationale for modifying Tanaka’s history data record to include an editable “retention period” attribute would have been to provide users with greater control over the edits made to documents and images. The POSITA would have concluded that this would have resulted in reduced editing history file sizes, while ensuring that edits that the user wishes to retain are not deleted.
Tanaka-Marston fails to explicitly disclose sending, to the operation unit, a change notification comprising a description of the condition change operation.
P discloses sending, to an operation unit, a change notification comprising a description of a condition change operation (In response to a user’s request to extend a retention period, a notification is sent to the data storage center that describes this change. ¶¶ 78-79.).
These teachings would have suggested to the POSITA to modify Tanaka-Marston to notify its system that the user has changed the retention period associated with certain edits (as in Marston ¶ 59). It would therefore have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Tanaka-Marston with teachings found in P, the rationale being to ensure that modifications to the retention period are properly received and reflected in the history data record, and to ensure that edits are not unintentionally deleted when the user wishes for a retention period to be extended.
Claim 2: Tanaka-Marston-P discloses that the condition change operation is performed via the operation unit and comprises the change to the retention period wherein the change to the retention period is based on the attribute of the editing operation correspondingly recorded in the history data record (Marston ¶¶ 59-63).
Claim 3: Tanaka-Marston-P discloses that the condition change operation comprises changing, for the attribute of the editing operation, a first retention period corresponding to the attribute of the editing operation (Marston ¶¶ 59-63); and
the operations further comprise receiving, via the operation unit, information of a second condition change operation performed for a second history data record corresponding to a second attribute of the editing operation, wherein the information of the second condition change operation comprises a change to a second retention period different from the first retention period (Marston ¶¶ 59-63. See, in addition, the assertion of official notice (03/23/2026 Office action at 10) that was untraversed by the applicant, rendering this subject matter admitted prior art. See MPEP 2144.03(C).).
Claim 6: Tanaka-Marston-P discloses that the modifying the history data record comprises deleting the history data record in response to the retention period of the history data record has elapsing (Marston ¶ 59.).
Claim 10: Tanaka-Marston-P renders obvious that the information editing system further includes a first terminal with the operation unit and a second terminal with a second operation unit, and the information editing system is configured to edit the object via the operation unit of the first terminal when the first terminal is logged into the information editing system using a first ID that is previously authorized to modify the storage of the history data record and the information editing system is further configured to edit the object via the second operation unit of the second terminal when the second terminal is logged into the information editing system using a second ID that is not authorized to modify the storage of the history data record,
wherein the operations further comprise:
determining whether an active ID logged into the information editing system is the first ID or the second ID; wherein, when the active ID logged into the information editing system is the first ID and the condition change operation is performed via the first operation unit, the change condition operation includes determining whether to permit modification of a permission setting for accepting o modification of the storage state of the history data record via the second operation unit;
wherein, in response to a determination that the modification of the permission setting is not permitted, the information editing system does not accept the modifying the history data record via the second operation unit, and
wherein, in response to a determination that the modification of the permission setting is permitted, the modifying the history data record is performed via the second operation unit (Tanaka-Marston-P renders this claim obvious. See the rejection of claim 10 in the 03/23/2026 non-final Office action (pg. 10-11), the position of which is incorporated here. See also the assertion of official notice that limitations in previous claim 10, from which current claim 10 does not differ significantly, was well known. The applicant did not traverse this assertion, rendering the asserted subject matter admitted prior art. MPEP 2144.03(C)).
Claim 11: see rejection of claim 1.
Claim 12: Tanaka-Marston-P renders obvious the invention in claim 12, including:
establishing a data connection, via an access point, between the operation unit and the computer, wherein the receiving, via the operation unit, the editing information for an editing operation further comprises receiving the editing information via the access point and while the data connection is established, and wherein the storing the history data record comprises storing the history data record in memory of the computer (Marston shows that users can create edits via their client device 114. See Marston Fig. 1 and ¶¶ 22-23. These devices are connected to the messaging server via network 110, and a data connection between the client and the server is established via an access point. Id. ¶¶ 27-28. Upon providing a comment and a context, i.e. editing information, the history information stored in the server is updated to reflect this. Id. ¶¶ 62-63. This teaching in Marston would have suggested modifying Tanaka to store its history data information remotely from the document editing apparatus in order to enable those comments to be viewed by and shared with a variety of different users.).
Claim 13: P discloses that the change notification comprises an indication of the change to the retention period for the history data record (P ¶¶ 78-79.).
Claim 14 recites that the change notification comprises an indication of the change to the permission setting for deletion of the history data record. See the “Claim Interpretation” heading above regarding why this language in claim 14 does not limit the claim’s BRI. Therefore claim 14 is rendered obvious by Tanaka-Marston-P for reasons set forth in the rejection of claim 1.
Even if this language is limiting, the claim is obvious in light of Tanaka-Marston-P. See the 03/23/2026 non-final Office action pg. 11, in which official notice was taken (and not traversed) that it was well known to specify “access rights … to protect data from modification by users who are not granted edit permissions,” and that including this in Tanaka-Marston-P would have been obvious “in order to provide increased data protections.” This position is maintained, and it is also maintained that modifying Tanaka-Marston-P to enable changing permissions for deleting the history data record would have been obvious for this reason – that is, “in order to provide increased data protections.”
Claim 15 recites that the information of the condition change operation includes both the change to the retention period for the history data record and the change in the permission setting for deletion of the history data record. See the §112(b) rejection above regarding the indefinite scope of this language. Even if this language does limit the claim, the claim is obvious over Tanaka-Marston-P. See the 03/23/2026 non-final Office action pg. 11, in which official notice was taken (and not traversed) that it was well known to specify “access rights … to protect data from modification by users who are not granted edit permissions,” and that including this in Tanaka-Marston-P would have been obvious “in order to provide increased data protections.” This position is maintained, and it is also maintained that modifying Tanaka-Marston-P to enable changing a retention period as well as changing permissions for deleting the history data record would have been obvious for this reason – that is, “to provide increased data protections.”
Claims 4-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka-Marston-P in view of Shima, US 6867874.
Claim 4: Tanaka-Marston-P does not disclose, but Shima suggests:
comparing a size of a the history data record with a size of a second history data record, the second history data record being stored in memory of the computer; and in response to the comparing, changing: the retention period of the first history data record or a retention period of the second history data record, based on whichever has the smaller size, to be within an upper limit of a first retention period, and the retention period of the history data record or the retention period of the second history data record, whichever has the greater size, to be within an upper limit of a second retention period shorter than the first retention period (Shima 8:5-15 – data retention length is set according to the size of the data. This suggests comparing relative data sizes and adjusting the data retention period according to the comparison.).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Tanaka-Marston=P with these teachings in Shima, the rationale being to provide increased control over management of data size. When Tanaka-Marston is modified to include this feature, the limitations in claim 4 are rendered obvious.
Claim 5: The Tanaka-Marston-P-Shima combination described above renders obvious: determining whether a size of one or more history data records for which the condition change operation has been performed via the operation unit is less than or equal to a predetermined threshold value, wherein, when the size of a given history data record of the one or more history data records is less than or equal to the predetermined threshold value, the retention period for the given history data record is changed to be within a first retention period, and wherein, when the size of the given history data records is greater than the predetermined threshold value, the retention period for the given history data record is changed to be within a second retention period shorter than the first retention period (see Shima 8:5-15, which suggests performance of these steps).
Claim 8: Tanaka-Marston-P-Shima discloses comparing the size of the history data record with a second size of a second history data record having a second retention period that has elapsed, and wherein, in the reducing the size of the history data record, based on the comparing, the smaller of the size of the history data record and the second size of the second history data record is reduced by a first specified percentage, and the greater of the size of either the first history data record or and the second size of the second history data record is reduced by a second specified percentage that is greater than the first specified percentage (This would be the natural effect of altering the retention period based on compared file sizes, as in Shima. Changing the retention period results in a reduction in data size by relative amounts based on the size of the files that are deleted.).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka-Marston-P in view of Danilov, US 20210342296.
Claim 7: Marston-Tanaka-P fails to disclose, but Danilov discloses: modifying the history data record comprises reducing a size of the history data records in response to the retention period of the history data record has elapsing (Fig. 2-3 and their description – data is truncated (its size is reduced) after its retention period has expired).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Tanaka-Marston-P with these teachings in Danilov, the rationale being to provide increased control over management of data size.
Claim 9: Tanaka-Marston-P-Danilov discloses determining whether the size of one or more history data records whose retention period has elapsed is less than or equal to a predetermined threshold value, and wherein, when the size of a given history data record of the one or more history data records is less than or equal to the predetermined threshold value, the size of the given history data record is reduced by a first specified percentage, and wherein, when the size of the given history data record is greater than the predetermined threshold value in the determining, the size of the given history data records is reduced by a second specified percentage that is greater than the first specified percentage (Danilov ¶¶ 34-36 – the size-based data expiration reduces expired data to a predefined size. Therefore the amount of reduction is based on comparison to a size limit.).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
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