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 .
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,141,211 in view of Schafer et al. (US Patent Application Publication No. 2023/0229711). The claims of the instant application and the claims of the reference patent are compared in the table below.
Instant Application No. 18/914,339.
Claim 1. A method comprising:
displaying, as part of a window in a word processing system , a graphical user interface (GUI) configured to receive a plurality of record documents from a user;
storing the plurality of record documents in a document database;
automatically analyzing, with at least one processor, an editable textual document displayed by the word processing system to identify at least one assertion in the editable textual document;
determining, with at least one processor, a score for each assertion of the at least one assertion in view of the plurality of record documents;
ranking, with at least one processor, a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and adding or replacing, with at least one processor, at least one citation in the textual document based on the plurality of citations.
US Patent No. 12,141,211.
Claim 1. A computer-implemented method for processing a textual document, comprising:
displaying an interactive graphical user interface within a word processing application while a textual document is being edited in the word processing application; receiving, through the interactive graphical user interface or a separate graphical user interface, a plurality of documents; receiving, through the interactive graphical user interface or the separate graphical user interface, user input representing a citation format corresponding to a document of the plurality of documents, the user input representing the citation format comprising at least one delimiter or symbol representing at least one dynamic part of a citation; determining, with at least one processor, a plurality of citations from the textual document based on the plurality of documents and the citation format; displaying the plurality of citations in the interactive graphical user interface separate from the textual document; determining, with at least one processor, at least one suggested edit for at least one citation of the plurality of citations based on a confidence of the at least one citation;
displaying the at least one suggested edit in the interactive graphical user interface; and modifying, with at least one processor, the at least one citation within the textual document based on user input accepting or changing the at least one suggested edit.
Claim 1 of the reference patent recites all of the limitations of claim 1 of the instant application except “a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and adding or replacing, with at least one processor, at least one citation in the textual document based on the plurality of citations..” However, Schafer teaches the user may use the document citation engine add-in to upload record documents that are related to the legal brief document, the user may use the add-in to perform an automated analysis of the legal brief document. The user may determine if changes to the legal brief document (e.g., text and/or citations) are needed or desired. The document citation engine may also modify some citations automatically (e.g., syntax corrections). If the user determines that changes are needed, the user may modify the document without accounting for any complex formatting of citations (e.g., no field codes or syntax rules to follow); [Schafer para. 0089 and figure 5].
It would have been obvious to person of ordinary skill in the art before the effective filing date of the claimed invention to the user may use the document citation engine add-in to upload record documents that are related to the legal brief document, the user may use the add-in to perform an automated analysis of the legal brief document. The user may determine if changes to the legal brief document (e.g., text and/or citations) are needed or desired. The document citation engine may also modify some citations automatically (e.g., syntax corrections). If the user determines that changes are needed, the user may modify the document without accounting for any complex formatting of citations (e.g., no field codes or syntax rules to follow); as disclosed in Schafer, within the method of claim 1 of the reference patent, to a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and adding or replacing, with at least one processor, at least one citation in the textual document based on the plurality of citations.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schafer et al. (US Patent No. 11,194,963) in view of Pop-Lazarov et al. (US Patent No. 8,082,241) and further in view of Boucher (US Patent Application Publication No. 2008/0071803).
Regarding claim 1, Schafer discloses a method comprising: displaying, as part of a window in a word processing system , a graphical user interface (GUI) configured to receive a plurality of record documents from a user [see col. 1, lines 18-23 and figure 5; a citation is a mention within a textual document to a source that is external from the textual document, such as another textual document, a record (e.g., a document that is evidence in a legal matter), a law, or regulation. A citation could be expressed in an abbreviated form that follows certain conventions and display a list of at least one of the source references or the at least one alternate source reference based on the relevancy scores calculated by the machine learning algorithm. The ARP rank the source reference and the at least one alternate source reference according to the relevancy scores calculated by the machine learning algorithm and display it to a user using one or more GUI components];
storing the plurality of record documents in a document database [see col. 4, lines 25-29; An automated citation auditing system and method is described for parsing a textual document and auditing citations, taking into account the machine learning training with feedback provided by the users who are editing and/or viewing the document]; automatically analyzing, with at least one processor, an editable textual document displayed by the word processing system to identify at least one assertion in the editable textual document [see col. 4, lines 36-44; The citation auditing system obtain textual inputs directly from a user or parse a textual document being edited with the document processing system to automatically detect textual inputs. A prediction model applied to the textual input and determines semantic similarity measures for automatic generation of citation suggestions across different documents and passages of a database of reference documents. When a paragraph is edited within the document editing system, the prediction model employed by the citation auditing system to suggest a citation to a reference document]; however, Schafer fails to explicitly teach determining, with at least one processor, a score for each assertion of the at least one assertion in view of the plurality of record documents; ranking, with at least one processor, a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and adding or replacing, with at least one processor, at least one citation in the textual document based on the plurality of citations.
Pop-Lazarov discloses determining, with at least one processor, a score for each assertion of the at least one assertion in view of the plurality of record documents; ranking, with at least one processor, a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and adding or replacing, with at least one processor [see col. 3, lines 44-63; a citation editor add-in that provides citation processing within the context of the document rendering application. In Microsoft Word, a programmer may develop an add-in, also referred to as a global template, to provide generic functionality in the Word environment. For example, an add-in may contain common tools for working with documents. The author is provided access to functionality of the citation editor add-in by clicking graphical toolbar elements and menu commands that the citation editor add-in offers. Alternatively, the citation editor add-in may be a supplemental program that adds custom commands or custom features to an application; which corresponds to dynamically processing citation data for presentation within a document rendering application].
Schafer and Pop-Lazarov do not disclose at least one citation in the textual document based on the plurality of citations [see para. 0012-0016; a data processing system for generating a citation to a source in a document is provided. The data processing system comprises: a memory having a program that receives an input, assigns sematic meaning to the input, determines the source based on the assigned semantic meaning, and generates a citation for the determined source; and a processing unit that runs the program; which corresponds to a citation generator program that is a component of text manipulation program such as word processor].
It would have been obvious to one of an ordinary skill in the art, having the teachings of Schafer, Boucher and Pop-Lazarvov before the affective filing date of the claimed invention to modify, Schafer’s record upload and Boucher’s real-time citation generation to incorporate Pop-Lazarvov’s citation inserted into the document.
One would have been motivated to make such a combination in order to perform the result of an auto ranked cite written into the draft.
Regarding claims 2 and 12, Schafer discloses further comprising: receiving, through the GUI, user input that identifies [see col. 8, lines 1-10; The user preferences a database that stores preferences of each user of the auditing references program, such as preferred layout of the GUI and citation rules. The source reference repository a documents repository that stores legal sources or other external sources in a natural language that may be relevant to one or more assertions in the document].
Boucher discloses generates at least one citation rule for at least one record document of the plurality of record documents [see para. 0045; The program generates a citation consistent with one or more standards such as The Bluebook, ALWD Citation Manual, various local court rules, standards established for individual publications such as law review journals and legal publications].
One would have been motivated to make such a combination in order to perform the result of an auto ranked cite written into the draft
Regarding claims 3 and 13, Pop-Lazarov discloses wherein the at least one citation rule is stored as metadata for the at least one record document in the document database [see col. 4, lines 32-40; The shared library loaded by the citation application or by the citation editor add-in when the document rendering application is initially instantiated. The shared library serves as an intermediary between the citation editor add-in and the citation application].
Regarding claims 4 and 14, Boucher discloses wherein the at least one citation rule comprises a document category and a portion of a citation associated with the document category [see para. 0186-0187 and figures 11-15; The data segment includes one data structure as described below after the descriptions of the contents of the code segment. The getFieldValue function accepts the fieldName parameter that identifies the name of a field whose value the caller wants to retrieve. getFieldValue returns the desired field value as a String. The SpecificReferenceTableEntry base class has no fields in its data segment, so getFieldValue is ineffective in the illustrative base class].
Regarding claims 5 and 15, Boucher discloses wherein the portion of the citation comprises a document citation and a dynamic part of the citation [see para. 0139, 0235; performed by the program to update citations in the word processor document after a context change. A context change is a change in the word processor document that cause the format of a citation to change. Illustrative examples include changing the word processor document by cutting a citation, pasting a citation, altering a citation, adding a header or section break, and the like. Context changes may also occur as a result of a writer changing citation rules].
Regarding claims 6 and 16, Schafer discloses wherein the GUI comprises a selectable option configured to stamp each document of the plurality of record documents to number the plurality of record documents in a case record format [see col. 13, lines 3-15 and figures 5-6; The ARP rank the source reference and the at least one alternate source reference according to the relevancy scores calculated by the machine learning algorithm and display it to a user using one or more GUI components, the relevancy score take the form of a bar measure, the ARP display the suggested list and present editing action suggestions including (i) adding a suggested alternate source reference, (ii) replacing the citation with an alternative citation to the added alternate source reference or (iii) editing the textual assertion].
Regarding claims 7 and 17, Schafer discloses wherein the score for at least one assertion is determined automatically in response to a change event comprising a change to the textual document or a change to the plurality of record documents [see col. 13, lines 38-50; the ARP receive a response from the user responsive to the suggested list, such as the user choosing the alternative source reference and add the alternative reference as a training sample. For example, where the source/alternate source reference takes the form of an image (e.g., JPEG), PDF image, video, or the like, the user may rely both on his/her review of the displayed content of the source/alternate source reference as well as the relevancy score determined by the ARP].
Regarding claims 8 and 18, Schafer discloses further comprising: validating each record document of the plurality of record documents before storing each document in the document database [see col. 8, lines 15-30; capable of parsing the document, identifying citations and assertions using machine learning algorithm, validating and suggesting alternative citations and based on user feedback updating a training set and retraining the machine learning algorithm in order to improve accuracy. The auditing references method is explained in further detail below include a “custom upload” feature of the auditing references program. The custom upload feature allows a user to manually identify text in the document as a citation. Upon manual identification of specific text within the document as a citation, the machine learning algorithm may learn to recognize such text as a citation in the future].
Regarding claims 9 and 19, Pop-Lazarrov discloses further comprising: generating an index of cited record documents or an exhibit compilation based on the editable textual document and the document database [see col. 9, lines 15-26; automatically generate a formatted bibliography from citations that are added to a document of the bibliography generation process begins when the author selects a control presented by the citation editor add-in that executes the bibliography functionality. The author is provided an opportunity to define one or more preferences regarding the output style that the bibliography will take. For example, bibliography preferences include, but are not limited to, font style, size, indentations, starting number for the bibliography, etc. Alternatively, bibliography preferences are set before hand by the author and the software simply reads the defined preferences from a data file].
Regarding claim 10, Schafer discloses a system comprising: at least one processor configured to [see col. 14, lines 37-50; include one or more processors, one or more computer-readable RAMs, and one or more computer-readable ROMs on one or more buses, and one or more operating systems and one or more computer-readable tangible storage devices]: display, as part of a window in a word processing system , a graphical user interface (GUI) configured to receive a plurality of record documents from a user [see col. 14, lines 18-23 and figure 5; a citation is a mention within a textual document to a source that is external from the textual document, such as another textual document, a record (e.g., a document that is evidence in a legal matter), a law, or regulation. A citation could be expressed in an abbreviated form that follows certain conventions and display a list of at least one of the source references or the at least one alternate source reference based on the relevancy scores calculated by the machine learning algorithm. The ARP rank the source reference and the at least one alternate source reference according to the relevancy scores calculated by the machine learning algorithm and display it to a user using one or more GUI components];
store the plurality of record documents in a document database [see col. 4, lines 25-29; An automated citation auditing system and method is described for parsing a textual document and auditing citations, taking into account the machine learning training with feedback provided by the users who are editing and/or viewing the document]; automatically analyze, with at least one processor, an editable textual document displayed by the word processing system to identify at least one assertion in the editable textual document [see col. 4, lines 36-44; The citation auditing system obtain textual inputs directly from a user or parse a textual document being edited with the document processing system to automatically detect textual inputs. A prediction model applied to the textual input and determines semantic similarity measures for automatic generation of citation suggestions across different documents and passages of a database of reference documents. When a paragraph is edited within the document editing system, the prediction model employed by the citation auditing system to suggest a citation to a reference document]; however, Schafer fails to explicitly teach determine, with at least one processor, a score for each assertion of the at least one assertion in view of the plurality of record documents; rank, with at least one processor, a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and add or replace, with at least one processor, at least one citation in the textual document based on the plurality of citations.
Pop-Lazarov discloses determine, with at least one processor, a score for each assertion of the at least one assertion in view of the plurality of record documents; rank, with at least one processor, a plurality of citations to the plurality of record documents for an assertion of the at least one assertion; and add or replace, with at least one processor [see col. 3, lines 44-63; a citation editor add-in that provides citation processing within the context of the document rendering application. In Microsoft Word, a programmer may develop an add-in, also referred to as a global template, to provide generic functionality in the Word environment. For example, an add-in may contain common tools for working with documents. The author is provided access to functionality of the citation editor add-in by clicking graphical toolbar elements and menu commands that the citation editor add-in offers. Alternatively, the citation editor add-in may be a supplemental program that adds custom commands or custom features to an application; which corresponds to dynamically processing citation data for presentation within a document rendering application].
Schafer and Pop-Lazarov do not disclose at least one citation in the textual document based on the plurality of citations [see para. 0012-0016; a data processing system for generating a citation to a source in a document is provided. The data processing system comprises: a memory having a program that receives an input, assigns sematic meaning to the input, determines the source based on the assigned semantic meaning, and generates a citation for the determined source; and a processing unit that runs the program; which corresponds to a citation generator program that is a component of text manipulation program such as word processor].
It would have been obvious to one of an ordinary skill in the art, having the teachings of Schafer, Boucher and Pop-Lazarvov before the affective filing date of the claimed invention to modify, Schafer’s record upload and Boucher’s real-time citation generation to incorporate Pop-Lazarvov’s citation inserted into the document.
One would have been motivated to make such a combination in order to perform the result of an auto ranked cite written into the draft.
Regarding claim 11, Schafer discloses further comprising: a data storage device comprising the document database, the document database comprising an association between each document and at least one citation rule [see col. 11, lines 4-17; the ARP add a corrected assertion and/or citation to a sample list and retrain the neural network of using the updated sample list. Then, the ARP confirms proper format of the citations, the ARP format all of the identified citations based on the citation rules. For example, the citation rules according to a Bluebook convention rules, the ARP analyze the citations of the document and format nonconforming citations according to a majority citations of the document].
Regarding claim 20 is an independent claim and relates to a computer program product for processing a textual document, comprising at least one non-transitory computer-readable medium including program instructions that, when executed by at least one processor, cause the at least one processor to. Since the features of claim 20 are substantially the same as those of claim 10 except for the category of invention, the same reasoning as in claim 10 applies to claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892).
Sharma et al. (US 2021/0406290) discloses a method includes receiving, at a computing device, an electronic document, wherein the electronic document is a legal brief comprising a plurality of paragraphs; identifying one or more argument paragraphs from among the plurality of paragraphs, wherein each of the one or more argument paragraphs includes one or more legal arguments; performing a textual search of a corpus of legal documents based on a selected set of the identified argument paragraphs; performing a semantic search of the corpus of legal documents based on the selected set of the identified argument paragraphs; combining results of the textual search and the semantic search; and presenting the combined results to a user.
A reference to specific paragraphs, columns, pages, or figures in a cited prior art reference is not limited to preferred embodiments or any specific examples. It is well settled that a prior art reference, in its entirety, must be considered for all that it expressly teaches and fairly suggests to one having ordinary skill in the art. Stated differently, a prior art disclosure reading on a limitation of Applicant's claim cannot be ignored on the ground that other embodiments disclosed were instead cited. Therefore, the Examiner's citation to a specific portion of a single prior art reference is not intended to exclusively dictate, but rather, to demonstrate an exemplary disclosure commensurate with the specific limitations being addressed. In re Heck, 699 F.2d 1331, 1332-33,216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006,1009, 158 USPQ 275, 277 (CCPA 1968)). In re: Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1782 (Fed. Cir. 1992); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In re Fracalossi, 681 F.2d 792,794 n.1,215 USPQ 569, 570 n.1 (CCPA 1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
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/CAO H NGUYEN/Primary Examiner, Art Unit 2171
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