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 Office Action is responsive to: Application filed 24 Oct. 2024
Claims 1-15 are pending in this case. Claims 1, 8 and 15 are independent claims
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 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. US 12130855. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions recites similar claim language reciting the same common assignee invention for constructing digital documents..
18926221 (Claimed Invention)
U.S. Patent No. US 12130855
1. A computer system comprising:
a processor;
a memory;
computer instructions, when executed, cause the computer system to provide a system for
managing digital documents, the system for managing digital documents being programmed to:
define a data model defining a hierarchy of terms;
create at least one document, including the hierarchy of terms;
permit a user to selectively choose terms from the hierarchy of terms to form the at least one document.
1. A computer system comprising:
a processor;
a memory;
computer instructions, when executed, cause the computer system to provide a system for
managing digital documents, the system for managing digital documents being programmed to:
define a data model defining a hierarchy of terms;
create at least one document, including the hierarchy of terms;
permit a user to selectively choose terms from the hierarchy of terms to form the at least one document;
create an anatomy of the at least one document;
generate a display for a graphical user interface comprising the anatomy and a range of acceptable values for at least one of the terms selectively chosen by the user;
output to the user the display comprising the anatomy and the range of acceptable values for the at least one of the terms selectively chosen by the user;
determine a value for the at least one term selectively chosen by the user within the range of acceptable values; and
generate a display for the graphical user interface comprising a natural language version of the at least one document derived from the anatomy and the value for the at least one term selectively chosen by the user; and
output to the user the display comprising the natural language version of the at least one electronic document derived from the anatomy and the value for the at least one term selectively
chosen by the user.
2. The system according to claim 1, wherein the system is configured to compare at least two of the hierarchy of terms based on a relative strength between the at least two terms.
2. The system according to claim 1, wherein the system is configured to compare at least two of the hierarchy of terms based on a relative strength between the at least two terms.
3. The system according to claim 1, wherein the system is configured to auto-negotiate terms of the at least one document between at least two entities.
3. The system according to claim 1, wherein the system is configured to auto-negotiate terms of the at least one document between at least two entities
4. The system according to claim 3, wherein the system is adapted to define, for each of the at least two entities, a playbook that identifies parameters by which the at least one document should be negotiated by the system.
4. The system according to claim 3, wherein the system is adapted to define, for each of the at least two entities, a playbook that identifies parameters by which the at least one document should be negotiated by the system
5. The system according to claim 1, wherein the system further comprises a machine learning element that is adapted to suggest at least one term among the hierarchy of terms for inclusion in the at least one document.
5. The system according to claim 1, wherein the system further comprises a machine learning element that is adapted to suggest at least one term among the hierarchy of terms for inclusion in the at least one document.
6. The system according to claim 5, wherein the machine learning element is configured to train responsive to user input provided to the system.
6. The system according to claim 5, wherein the machine learning element is configured to train responsive to user input provided to the system.
7. The system according to claim 6, wherein the machine learning element is configured to train and adapt responsively to user input provided to the system in a feedback loop.
7. The system according to claim 6, wherein the machine learning element is configured to train and adapt responsively to user input provided to the system in a feedback loop.
8. A method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents;
creating at least one electronic document, including the hierarchy of terms; and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document.
8. A method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents;
creating at least one electronic document, including the hierarchy of terms; and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document;
create an anatomy of the at least one electronic document;
generate a display for a graphical user interface comprising the anatomy and a range of acceptable values for at least one of the terms selectively chosen by the user;
output to the user the display comprising the anatomy and the range of acceptable values for the at least one of the terms selectively chosen by the user;
determine a value for the at least one term selectively chosen by the user within the range of acceptable values; and
generate a display for the graphical user interface comprising a natural language version of the at least one electronic document derived from the anatomy and the value for the at least one term selectively chosen by the user; and
output to the user the display comprising the natural language version of the at least one electronic document derived from the anatomy and the value for the at least one term selectively chosen by the user.
9. The method according to claim 8, further comprising an act of comparing, by a computer system, at least two of the hierarchy of terms based on a relative strength between the at least two terms.
9. The method according to claim 8, further comprising an act of comparing, by a computer system, at least two of the hierarchy of terms based on a relative strength between the at least two terms.
10. The method according to claim 8, further comprising an act of auto-negotiating, by a computer system, terms of the at least one electronic document between at least two entities.
10. The method according to claim 8, further comprising an act of auto-negotiating, by a computer system, terms of the at least one electronic document between at least two entities.
11. The method according to claim 10, further comprising an act of defining, for each of the at least two entities, a playbook that identifies parameters by which the at least one electronic document should be negotiated by the computer system.
11. The method according to claim 10, further comprising an act of defining, for each of the at least two entities, a playbook that identifies parameters by which the at least one electronic document should be negotiated by the computer system.
12. The method according to claim 8, further comprising an act of suggesting, by a machine learning element, at least one term among the hierarchy of terms for inclusion in the at least one electronic document.
12. The method according to claim 8, further comprising an act of suggesting, by a machine learning element, at least one term among the hierarchy of terms for inclusion in the at least one electronic document.
13. The method according to claim 12, further comprising an act of training the machine learning element responsive to user input provided to the system.
13. The method according to claim 12, further comprising an act of training the machine learning element responsive to user input provided to the system.
14. The method according to claim 13, further comprising an act of training the machine learning element responsively to user input provided to the system in a feedback loop.
14. The method according to claim 13, further comprising an act of training the machine learning element responsively to user input provided to the system in a feedback loop.
15. A non-transitory computer-readable medium, that when executed by at least one processor,
performs a method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents;
creating at least one electronic document, including the hierarchy of terms; and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document.
15. A non-transitory computer-readable medium, that when executed by at least one processor, performs a method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents;
creating at least one electronic document, including the hierarchy of terms; and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document;
create an anatomy of the at least one electronic document;
generate a display for a graphical user interface comprising the anatomy and a range of acceptable values for at least one of the terms selectively chosen by the user;
output to the user the display comprising the anatomy and the range of acceptable values for the at least one of the terms selectively chosen by the user;
determine a value for the at least one term selectively chosen by the user within the range of acceptable values; and
generate a display for the graphical user interface comprising a natural language version of the at least one electronic document derived from the anatomy and the value for the at least one term selectively chosen by the user; and
output to the user the display comprising a natural language version of the at least one electronic document derived from the anatomy and the value for the at least one term selectively chosen by the user.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 3-6, 10-13 and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banerjee et al. (Pub. No.: US 2019/0266231 A1; Filed: Feb. 27, 2018)(hereinafter “Banerjee”).
Regarding independent claim 1, Banerjee disclose a computer system comprising:
a processor (0003);
a memory (0003);
computer instructions, when executed, cause the computer system to provide a system for managing digital documents, the system for managing digital documents being programmed to (0003; 0020; 0024):
define a data model defining a hierarchy of terms (0021-0025; 0027; 0039);
create at least one document, including the hierarchy of terms (0024-0028);
permit a user to selectively choose terms from the hierarchy of terms to form the at
least one document (0024-0025).
Regarding dependent claim 3, Banerjee disclose the system according to claim 1, wherein the system is configured to auto-negotiate terms of the at least one document between at least two entities (0059-0062).
Regarding dependent claim 4, Banerjee disclose the system according to claim 3, wherein the system is adapted to define, for each of the at least two entities, a playbook that identifies parameters by which the at least one document should be negotiated by the system (0059-0065).
Regarding dependent claim 5, Banerjee disclose the system according to claim 1, wherein the system further comprises a machine learning element that is adapted to suggest at least one term among the hierarchy of terms for inclusion in the at least one document (0020; 0021; 0024-0028).
Regarding dependent claim 6, Banerjee disclose the system according to claim 5, wherein the machine learning element is configured to train responsive to user input provided to the system (0021; 0024; 0068).
Regarding independent claim 8, Banerjee disclose a method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents (0021-0025; 0027; 0039);
creating at least one electronic document, including the hierarchy of terms (0024-0028); and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document (0024-0025).
Regarding dependent claim 10, Banerjee disclose the method according to claim 8, further comprising an act of auto-negotiating, by a computer system, terms of the at least one electronic document between at least two entities (0059-0062).
Regarding dependent claim 11, Banerjee disclose the method according to claim 10, further comprising an act of defining, for each of the at least two entities, a playbook that identifies parameters by which the at least one electronic document should be negotiated by the computer system (0059-0065).
Regarding dependent claim 12, Banerjee disclose the method according to claim 8, further comprising an act of suggesting, by a machine learning element, at least one term among the hierarchy of terms for inclusion in the at least one electronic document (0020; 0021; 0024-0028).
Regarding dependent claim 13, Banerjee disclose the method according to claim 12, further comprising an act of training the machine learning element responsive to user input provided to the system (0021; 0024; 0068).
Regarding independent claim 15, Banerjee disclose a non-transitory computer-readable medium, that when executed by at least one processor,
performs a method comprising acts of:
defining a data model defining a hierarchy of terms associated with electronic documents (0021-0025; 0027; 0039);
creating at least one electronic document, including the hierarchy of terms (0024-0028); and
permitting, within a computer interface, a user to selectively choose terms from the hierarchy of terms to form the at least one electronic document (0024-0025).
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 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee in view of Mani et al. (Pub. No.: US 2015/0095770 A1; Filed: Sep. 11, 2014)(hereinafter “Mani”).
Regarding dependent claims 2 and 9, Banerjee does not expressly disclose the system according to claims 1 and 8 respectively, wherein the system is configured to compare at least two of the hierarchy of terms based on a relative strength between the at least two terms.
Mani teach wherein the system is configured to compare at least two of the hierarchy of terms based on a relative strength between the at least two terms (0007; 0046; 0051).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine Mani with Banerjee for the benefit of providing a more efficient process of finding a document whose content is truly relevant to the interest of the user (0005).
Claims 7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee in view of Bhowal et al. (Pub. No.: US 2020/0327197 A1; Filed: May 5, 2019)(hereinafter “Bhowal”).
Regarding dependent claims 7 and 14, Banerjee does not expressly disclose the system according to claims 6 and 13 respectively, wherein the machine learning element is configured to train and adapt responsively to user input provided to the system in a feedback loop.
Bhowl teach wherein the machine learning element is configured to train and adapt responsively to user input provided to the system in a feedback loop (0108-0114).
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to combine Bhowl with Banerjee for the benefit of providing a less-intense, time consuming and tedious process of creatin training date for human users (0001).
NOTE
It is noted that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES J DEBROW whose telephone number is (571)272-5768. The examiner can normally be reached on 09:00 - 06:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Bashore can be reached on 571-272-4088. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James J Debrow/
Primary Patent Examiner
Art Unit 2174
571-272-5768
Prosecution Insights