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 .
Status of Claims
This action is in reply to the communications filed on 05/20/2026 and 05/28/2026.
Claims 1, 8, and 18-20 have been amended and are hereby entered.
Claims 1-20 are currently pending and have been examined.
This action is made Non-Final.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for U.S.C. §112(a) paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/11/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/28/2026 has been entered.
Claim Objection
Claims 19 and 20 are objected to because of the following informalities:
Claim 19: line 5 and Claim 20: line 8 recite the limitation “searching, by one or more processors, words on a document.” “One or more processors” is previously recited in Claim 19: line 3 and Claim 20: line 2. Is the ‘one or more processors’ recited in Claim 19: line 5 and Claim 20: line 8 different than ‘one or more processors’ previously recited in Claim 19: line 3 and Claim 20: line 2? It appears there is a typographical mistake since the specification only points to a single instance of one or more processors. For compact examination purposes, Examiner interpreted the instances recited in Claim 19: line 5 and Claim 20: line 8 as “searching, by the one or more processors, words on a document.” Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of processing a document without significantly more.
Examiner has identified claim 20 as the claim that represents the claimed invention presented in independent claims 1, 19, and 20.
Claim 1 is directed to a method, which is one of the statutory categories of invention; (Step 1: YES); Claim 19 is directed to an article of manufacture, which is one of the statutory categories of invention; (Step 1: YES); and Claim 20 is directed to a system, which is one of the statutory categories of invention (Step 1: YES).
Claim 20 is directed to a system comprising: one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising: searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language; determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field; associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required, wherein the tag also at least one of: displays questions about the document or displays information about the document; and converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input. These series of steps describe the abstract idea of processing a document (with the exception of the italicized and bolded terms above), which is mitigating risk of document data being compromised and/or errors occurring while processing various documents; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the processing of documents between users and/or entities involved in a transaction, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. The computer device limitations, e.g., one or more processors and one or more tangible, non-transitory memories do not necessarily restrict the claim from reciting an abstract idea. Thus, claim 20 is directed to an abstract idea (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because the additional limitations of one or more processors and one or more tangible, non-transitory memories, are no more than simply applying the abstract idea using generic computer elements. The additional elements listed above are all recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computing arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention (MPEP 2106.05(f)). Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, claim 20 is directed to an abstract idea (Step 2A-Prong 2: NO).
Claim 20 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional element one or more processors and one or more tangible, non-transitory memories are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment (Step 2B: NO). Thus, claim 20 is not patent eligible.
Similar arguments can be extended to the other independent claims, claims 1 and 19; and hence claims 1 and 19 are rejected on similar grounds as claim 20.
Dependent claims 2-18 are directed to a method, which recites steps that describe the abstract idea of processing a document. Specifically, dependent claims 9, 14, and 16-17 are directed to a method, which recites a series of steps, e.g., wherein an object detection algorithm is used in the determining the existence and the location of the object field; wherein the one or more processors at least one of implement parallel processing or include multiple servers, further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field; and further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field, in association with at least one of the document, document type or participant account. These series of steps describe the abstract idea of processing a document (with the exception of the italicized and bolded terms above), which is mitigating risk of document data being compromised and/or errors occurring while processing various documents; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the processing of documents between users and/or entities involved in a transaction, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. Furthermore, the abstract idea involves evaluating the accuracy of document data, which is a concept performed in the human mind (including an observation, evaluation, judgment, opinion). Therefore, a concept performed in the human mind is a Mental Process. Thus, claims 2-18 are directed to an abstract idea. The additional elements of one or more processors, one or more tangible, non-transitory memories, object detection algorithm, multiple servers, and knowledge database are no more than simply applying the abstract idea using generic computer elements. Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Furthermore, the additional elements, one or more processors, one or more tangible, non-transitory memories, object detection algorithm, multiple servers, and knowledge database, do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment.
Dependent claims 2-18 have further defined the abstract idea that is present in their respective independent claim 1; and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract in nature for the reason presented above. The dependent claims 2-18 do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, claims 2-18 are directed to an abstract idea.
Thus, claims 1-20 are not patent-eligible.
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 AlA. 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 1-2, 5, 7-12, and 14-20 of U.S. Patent No. 12,169,976. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by patent claims 1-2, 5, 7-12, and 14-20. See chart below:
Instant Application 18/943,421
US Patent 12,169,976
For ease of comprehension, below contains only relevant and redacted claim language from the allowed patented application.
Claim 1.
A method comprising:
searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language;
determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input;
creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field;
associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature is required, wherein the tag also at least one of: displays questions about the document or displays information about the document; and
converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input.
Claim 1.
A method comprising:
searching, by the one or more processors, the words for keywords, wherein the keywords include at least one of a name of a participant that needs to sign the document or notary language;
determining, by the one or more processors, an existence and location of an object field in the image document, based on the keywords, the type of the object and the object, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input;
creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the image document in the object field;
associating, by the one or more processors, the tag with the object field, wherein the tag at least one of indicates that the image document requires a notary, displays questions about the image document, displays information about the image document or display displays areas on the image document where a signature is required; and
enabling, by the one or more processors using the metadata, interaction with the object field, wherein the enabling converts the object field to an interactive object field to allow the interaction, and wherein the interaction includes the interactive object field being configured to accept electronic data input. (See also, Claim 17.) further comprising enabling, by the one or more processors, the object field to accept electronic entries.)
Claim 2.
further comprising searching, by the one or more processors, words in the document for keywords, wherein the keywords include at least one of a name of a participant that needs to sign the document or notary language.
Claim 1.
searching, by the one or more processors, the words for keywords, wherein the keywords include at least one of a name of a participant that needs to sign the image document or notary language;
Claim 3.
wherein the keywords further include the participant type, document types or instructional terms.
Claim 5.
wherein the keywords further include, the participant type, document types or instructional terms.
Claim 4.
further comprising converting, by one or more processors, the document into an image document, wherein content is locked within an image of the document, and wherein one or more object fields are not interactive upon the converting.
Claim 1.
converting, by one or more processors, a document into an image document, wherein the content is locked within the image of the image document, and wherein one or more object fields are not interactive;
Claim 5.
wherein the document is at least one of a PDF, DOCX, DOC, TXT, PNG, HTML or JPEG.
Claim 2.
wherein the image document is at least one of a PDF, DOCX, DOC, TXT, PNG, HTML or JPEG.
Claim 6.
wherein the determining the existence and the location of the object field is based on keywords, an object in the document and a type of the object in the document.
Claim 1.
determining, by the one or more processors, an existence and location of an object field in the image document, based on the keywords, the type of the object and the object,
Claim 7.
wherein the determining the existence and the location of the object field is further based on requirements and placements of the object field.
.
Claim 1.
determining, by the one or more processors, an existence and location of an object field in the image document, based on the keywords, the type of the object and the object,
Claim 15.
wherein the determining the object field is further based on requirements and placements of the object field.
Claim 8.
wherein the object includes at least one of a geometric shape, line, field, parenthesis or colon.
Claim 8.
wherein the object includes at least one of a geometric shape, line, field, parenthesis or colon.
Claim 9.
wherein an object detection algorithm is used in the determining the existence and the location of the object field.
Claim 1.
determining, by the one or more processors, an existence and location of an object field in the image document,
Claim 7.
wherein an object detection algorithm is used in the determining the object fields.
Claim 10.
wherein the object field includes at least one of a signature field, checkbox, bubble, circle, shape or symbol.
Claim 9.
wherein the object field includes at least one of a signature field, checkbox, bubble, circle, shape or symbol.
Claim 11.
wherein the metadata is at least one of associated with the document or added to the document.
Claim 10.
wherein metadata is at least one of associated with the image document or added to the image document.
Claim 12.
wherein the metadata includes other data related to the object field.
Claim 11.
wherein the metadata includes other data related to the object field.
Claim 13.
wherein the metadata at least one of enables interaction with the document in order to effectuate an electronic transaction, includes data about the object field, or includes a process for executing the document in the object field.
Claim 12.
wherein the metadata at least one of enables interaction with the image document in order to effectuate an electronic transaction, includes data about the object field, or includes a process for executing the image document in the object field.
Claim 14.
wherein the one or more processors at least one of implement parallel processing or include multiple servers.
Claim 14.
wherein the one or more processors at least one of implement parallel processing or include multiple servers.
Claim 15.
further comprising transmitting, by the one or more processors, the object field to a participant for participant validation.
Claim 16.
further comprising transmitting, by the one or more processors, the object field to a participant for participant validation.
Claim 16.
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field.
Claim 18.
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field.
Claim 17.
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field, in association with at least one of the document, document type or participant account.
Claim 19.
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field in association with at least one of the image document, document type or participant account.
Claim 18.
wherein the document is an image document, wherein content is locked within an image of the document, and wherein the object field is not interactive prior to the converting.
Claim 1.
converting, by one or more processors, a document into an image document, wherein the content is locked within the image of the image document, and wherein one or more object fields are not interactive;
Claims 19 and 20.
An article of manufacture including one or more non-transitory, tangible computer readable storage mediums having instructions stored thereon that, in response to execution by one or more processors, cause the one or more processors to perform operations comprising:
A system comprising: one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising:
searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language;
determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input;
creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field;
associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required; wherein the tag also at least one of: displays questions about the document or displays information about the document; and
converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input..
Claim 20.
A system comprising: one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising:
A system comprising: one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising:
searching, by the one or more processors, the words for keywords, wherein the keywords include at least one of names of participants that need to sign the document, the participant type, document types, instructional terms or notary language;
determining, by the one or more processors, an existence and location of an object field in the image document, based on the keywords, the type of the object and the object, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input;
creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the image document in the object field;
associating, by the one or more processors, the tag with the object field, wherein the tag at least one of indicates that the document requires a notary, displays questions about the document, displays information about the document or display areas on the document where a signature is required; and
enabling, by the one or more processors using the metadata, interaction with the object field, wherein the enabling converts the object field to an interactive object field to allow the interaction, and wherein the interaction includes the interactive object field being configured to accept electronic data input.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Silverbrook (U.S. Patent Application Publication No. US 2011/0302197A1 hereinafter “Silverbrook‘197”), in view of King (U.S. Patent Application Publication No. US 2010/0183246 A1; hereinafter “King”).
Regarding Claims 1, 19, and 20:
Silverbrook‘197 teaches :
A method comprising: (Silverbrook‘197, See, Para. 10, 29, 40, 46);
An article of manufacture including one or more non-transitory, tangible computer readable storage mediums having instructions stored thereon that, in response to execution by one or more processors, cause the one or more processors to perform operations comprising: (Silverbrook‘197, See, Para. 34, 40, 46);
A system comprising: one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising: (Silverbrook‘197, See, Para. 34, 40, 46);
searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language; (Silverbrook‘197, Alternatively, a user may wish to receive information based on keyword searching, even if the keyword is contained in an input element on a netpage. As used herein, the term “keyword” is used to mean a keyword or key-phrase.” (See, Para. 564, 626-627); As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc.; (See, Para. 887); After identifying the primary search terms a set of context terms is identified to help improve query precision. The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914));
determining, by the one or more processors, an existence and location of an object field in the document, wherein the document is an image document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input; (Silverbrook‘197, The corresponding page description 5, stored on the netpage network, describes the individual elements. of the netpage. In particular it describes the type and spatial extent (zone) of each interactive element (i.e. text field or button in the example), to allow the netpage: system to correctly interpret input via the netpage; (See, Para. 399); The fixed target structure allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor; (See, Para. 429); There are two kinds of input elements in a netpage description: hyperlinks and form fields. input through a form field can also trigger the activation of an associated hyperlink. The system may recognize or detect the input fields of the document. The fields and hyperlinks may be identified by the tags obtained from the scanned document. (See, Para. 494); A hyperlinked group 866 is a group element 838 which has an associated hyperlink, as shown in FIG. 18. When input occurs through any field element in the group, the hyperlink 844 associated with the group is activated; A hyperlinked group can be used to associate hyperlink behavior with a field such as a checkbox. It can also be used, in conjunction with the “submit delta” attribute of a form hyperlink, to provide continuous input to an application. It can therefore be used to support a “blackboard” interaction model, i.e. where input is captured and therefore shared as soon as it occurs. The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529); The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images (See, Para. 564); These are pages of text, graphics and images printed on ordinary paper, but which work like Interactive webpages... The ink, however, and thereby the coded data, can be sensed by an optically imaging sensing device and transmitted to the netpage system.” (See, Para. 2, 395-399)).
creating, by the one or more processors, a tag with [metadata] about a type of the tag and the object field, wherein the [metadata] includes data about executing the document in the object field; (Silverbrook‘197, A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415); The raster Image processor (RIP) consists of one or more standard DSPs 757 running in parallel (See, 564));
associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required; wherein the tag also at least one of: displays questions about the document or displays information about the document; and (Silverbrook‘197, A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415 and 564); As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc. (See, Para. 887); After identifying the primary search terms a set of context terms is Identified to help improve query precision; - The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914); The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529));
converting, by the one or more processors using the [metadata], the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input. (Silverbrook‘197, text written by hand on a netpage is automatically recognized and converted to computer text in the netpage system, allowing forms to be filled in. In other embodiments, signatures recorded on a netpage are automatically verified, allowing e-commerce transactions to be securely authorized. In other embodiments, text on a netpage may be clicked or gestured to initiate a search based on keywords indicated by the user. (See, Para. 398-99, 428-29); Extracted content can Include both the visual layout and the document markup (possibly converted to some standard format such as html”, (See, Para. 700); it describes the type and spatial extent (zone) of each interactive element (i.e. text field or button in the example), to allow the netpage: system to correctly interpret input via the netpage; (See, Para. 399); The fixed target structure allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor; (See, Para. 429); There are two kinds of input elements in a netpage description: hyperlinks and form fields. input through a form field can also trigger the activation of an associated hyperlink. The system may recognize or detect the input fields of the document. The fields and hyperlinks may be identified by the tags obtained from the scanned document. (See, Para. 494)).
Silverbrook‘197 does not specifically teach metadata.
However, King further teaches the following limitation:
metadata; (King, New and upcoming file systems and their associated databases often have the ability to store a variety of metadata associated with each file. Traditionally, this metadata has included such things as the ID of the user who created the file, the dates of creation, last modification, and last use. Newer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. (See, Para. 291)).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have modified Silverbrook‘197 with the features of King’s system because “paper documents have an enduring appeal, as can be seen by the proliferation of paper documents in the computer age. It has never been easier to print and publish paper documents than it is today. Paper documents prevail even though electronic documents are easier to duplicate, transmit, search and edit.” “Fewer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. For example, the date when a given document was last printed can be stored by the file system, as can details about which text from it has been captured from paper using the described system, and when and by whom.” (King, Para. 5 and 291).
Regarding Claim 2:
Silverbrook‘197 teaches:
further comprising searching, by the one or more processors, words in the document for keywords, wherein the keywords include at least one of a name of a participant that needs to sign the document or notary language. (Silverbrook‘197, Alternatively, a user may wish to receive information based on keyword searching, even if the keyword is contained in an input element on a netpage. As used herein, the term “keyword” is used to mean a keyword or key-phrase.” (See, Para. 564, 626-627); As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc.; (See, Para. 887); After identifying the primary search terms a set of context terms is identified to help improve query precision. Note: The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914)).
Regarding Claim 3:
Silverbrook‘197 teaches:
wherein the keywords further include the participant type, document types or instructional terms. (Silverbrook‘197, As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc.; (participant type) (See, Para. 887); After identifying the primary search terms a set of context terms is identified to help improve query precision (document types or instructional terms); Note: The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914)).
Regarding Claim 4:
Silverbrook‘197 teaches:
further comprising converting, by one or more processors, the document into an image document, wherein content is locked within an image of the document, and wherein one or more object fields are not interactive upon the converting. (Silverbrook‘197, The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images. The raster image processor (RIP) consists of one or more standard DSPs 757 running in parallel. The duplexed print engine controllers consist of custom processors which expand, dither and print page images in real time, synchronized with the operation of the printheads in the print engines. (See, Para. 564) In brief summary, the preferred form of the netpage system employs a computer interface in the form of a mapped surface, that is, a physical surface which contains references to a map of the surface maintained in a computer system. The map references can be queried by an appropriate sensing device. In this preferred form, the netpage system relies on the production of, and human interaction with, netpages. These are pages of text, graphics and images printed on ordinary paper, but which work like Interactive webpages... The ink, however, and thereby the coded data, can be sensed by an optically imaging sensing device and transmitted to the netpage system.” (See, Para. 2, 395-399, 463-468; Fig. 14, 15)).
Regarding Claim 5:
Silverbrook‘197 teaches:
wherein the document is at least one of a PDF, DOCX, DOC, TXT, PNG, HTML or JPEG. (Silverbrook‘197, Extracted content can Include both the visual layout and the document markup (possibly converted to some standard format such as html”, (See, Para. 700)).
Regarding Claim 6:
Silverbrook‘197 teaches:
wherein the determining the existence and the location of the object field is based on keywords, an object in the document and a type of the object in the document. (Silverbrook‘197, A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415 and 564); As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc. (See, Para. 887); After identifying the primary search terms a set of context terms is Identified to help improve query precision; - The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914); The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529)).
Regarding Claim 7:
Silverbrook‘197 teaches:
wherein the determining the existence and the location of the object field is further based on requirements and placements of the object field. (Silverbrook‘197, A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415); The raster Image processor (RIP) consists of one or more standard DSPs 757 running in parallel (See, 564); If the hyperlink requires a user alias, i.e. its alias required” attributed is set, then the first page server sends both the pen ID 61 and the hyperlinks application ID 64 to the registration server 11 to obtain not Just the user ID corresponding to the pen ID but also the alias ID 65 corresponding to the application ID and the user ID; Since a single document element 837 may span a number of pages 110, it may have a corresponding number of formatted page elements 835, each defining the position and extent... of a fragment (See, Para. 510, 840)).
Regarding Claim 8:
Silverbrook‘197 teaches:
wherein the object includes at least one of a geometric shape, line, field, parenthesis or colon. (Silverbrook‘197, The pen 101 may have one or more buttons 209, which are pressed by the user to select a mode of the pen. As described in Section 9.3 below, the button(s) are used to determine a behavior of the pen, which, in turn, determines how a stroke is interpreted by the page server 10. (See, Para. 415, 484, 510, 564, 660-672, 840)).
Regarding Claim 9:
Silverbrook‘197 teaches:
wherein an object detection algorithm is used in the determining the existence and the location of the object field. (Silverbrook‘197, The netpage consists of graphic data 2 printed using visible ink, and coded data 3 printed as a collection of tags 4 using invisible ink. The corresponding page description 5, stored on the netpage network, describes the individual elements. of the netpage. In particular it describes the type and spatial extent (zone) of each interactive element (i.e. text field or button in the example), to allow the netpage: system to correctly interpret input via the netpage; The fixed target structure allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor; There are two kinds of input elements in a netpage description: hyperlinks and form fields. input through a form field can also trigger the activation of an associated hyperlink. The system may recognize or detect the input fields of the document. The fields and hyperlinks may be identified by the tags obtained from the scanned document. (See, Para. 399, 415, 429, 494, 510, 840)).
Regarding Claim 10:
Silverbrook‘197 teaches:
wherein the object field includes at least one of a signature field, checkbox, bubble, circle, shape or symbol. Silverbrook‘197, A hyperlinked group 866 is a group element 838 which has an associated hyperlink, as shown in FIG. 18. When input occurs through any field element in the group, the hyperlink 844 associated with the group is activated. A hyperlinked group can be used to associate hyperlink behavior with a field such as a checkbox. It can also be used, in conjunction with the “submit delta” attribute of a form hyperlink, to provide continuous input to an application. It can therefore be used to support a “blackboard” interaction model, i.e. where input is captured and therefore shared as soon as it occurs. (See, Para. 500)).
Regarding Claim 11:
Silverbrook‘197 teaches:
wherein the [metadata] is at least one of associated with the document or added to the document. (Silverbrook‘197, one embodiment, active buttons and hyperlinks on each page can be clicked with the sensing device to request information from the network or to signal preferences to a network server. In one embodiment, text written by hand on a netpage is automatically recognized and converted to computer text in the netpage system, allowing forms to be filled in. In other embodiments, signatures recorded on a netpage are automatically verified, allowing e-commerce transactions to be securely authorized. In other embodiments, text on a netpage may be clicked or gestured to initiate a search based on keywords indicated by the user. The physical representation of the tag, shown in FIG. 5 a, includes fixed target structures 15, 16, 17 and variable data areas 18. The fixed target structures allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor. The data areas contain representations of the individual bits of the encoded tag data. (See, Para. 398-99, 428-29)).
Silverbrook‘197 does not specifically teach metadata.
However, King further teaches the following limitation:
metadata; (King, New and upcoming file systems and their associated databases often have the ability to store a variety of metadata associated with each file. Traditionally, this metadata has included such things as the ID of the user who created the file, the dates of creation, last modification, and last use. Newer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. (See, Para. 291)).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have modified Silverbrook‘197 with the features of King’s system because “paper documents have an enduring appeal, as can be seen by the proliferation of paper documents in the computer age. It has never been easier to print and publish paper documents than it is today. Paper documents prevail even though electronic documents are easier to duplicate, transmit, search and edit.” “Fewer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. For example, the date when a given document was last printed can be stored by the file system, as can details about which text from it has been captured from paper using the described system, and when and by whom.” (King, Para. 5 and 291).
Regarding Claim 12:
Silverbrook‘197 teaches:
wherein the [metadata] includes other data related to the object field. (Silverbrook‘197, one embodiment, active buttons and hyperlinks on each page can be clicked with the sensing device to request information from the network or to signal preferences to a network server. In one embodiment, text written by hand on a netpage is automatically recognized and converted to computer text in the netpage system, allowing forms to be filled in. In other embodiments, signatures recorded on a netpage are automatically verified, allowing e-commerce transactions to be securely authorized. In other embodiments, text on a netpage may be clicked or gestured to initiate a search based on keywords indicated by the user. The physical representation of the tag, shown in FIG. 5 a, includes fixed target structures 15, 16, 17 and variable data areas 18. The fixed target structures allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor. The data areas contain representations of the individual bits of the encoded tag data. (See, Para. 398-99, 428-29)).
Silverbrook‘197 does not specifically teach metadata.
However, King further teaches the following limitation:
metadata; (King, New and upcoming file systems and their associated databases often have the ability to store a variety of metadata associated with each file. Traditionally, this metadata has included such things as the ID of the user who created the file, the dates of creation, last modification, and last use. Newer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. (See, Para. 291)).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have modified Silverbrook‘197 with the features of King’s system because “paper documents have an enduring appeal, as can be seen by the proliferation of paper documents in the computer age. It has never been easier to print and publish paper documents than it is today. Paper documents prevail even though electronic documents are easier to duplicate, transmit, search and edit.” “Fewer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. For example, the date when a given document was last printed can be stored by the file system, as can details about which text from it has been captured from paper using the described system, and when and by whom.” (King, Para. 5 and 291).
Regarding Claim 13:
Silverbrook‘197 teaches:
wherein the [metadata] at least one of enables interaction with the document in order to effectuate an electronic transaction, includes data about the object field, or includes a process for executing the document in the object field. (Silverbrook‘197, one embodiment, active buttons and hyperlinks on each page can be clicked with the sensing device to request information from the network or to signal preferences to a network server. In one embodiment, text written by hand on a netpage is automatically recognized and converted to computer text in the netpage system, allowing forms to be filled in. In other embodiments, signatures recorded on a netpage are automatically verified, allowing e-commerce transactions to be securely authorized. In other embodiments, text on a netpage may be clicked or gestured to initiate a search based on keywords indicated by the user. The physical representation of the tag, shown in FIG. 5 a, includes fixed target structures 15, 16, 17 and variable data areas 18. The fixed target structures allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor. The data areas contain representations of the individual bits of the encoded tag data. (See, Para. 398-99, 428-29)).
Silverbrook‘197 does not specifically teach metadata.
However, King further teaches the following limitation:
metadata; (King, New and upcoming file systems and their associated databases often have the ability to store a variety of metadata associated with each file. Traditionally, this metadata has included such things as the ID of the user who created the file, the dates of creation, last modification, and last use. Newer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. (See, Para. 291)).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have modified Silverbrook‘197 with the features of King’s system because “paper documents have an enduring appeal, as can be seen by the proliferation of paper documents in the computer age. It has never been easier to print and publish paper documents than it is today. Paper documents prevail even though electronic documents are easier to duplicate, transmit, search and edit.” “Fewer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. For example, the date when a given document was last printed can be stored by the file system, as can details about which text from it has been captured from paper using the described system, and when and by whom.” (King, Para. 5 and 291).
Regarding Claim 14:
Silverbrook‘197 teaches:
wherein the one or more processors at least one of implement parallel processing or include multiple servers. (Silverbrook‘197, The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images. The raster image processor (RIP) consists of one or more standard DSPs 757 running in parallel. The duplexed print engine controllers consist of custom processors which expand, dither and print page images in real time, synchronized with the operation of the printheads in the print engines. (See, Para. 564)).
Regarding Claim 15:
Silverbrook‘197 teaches:
further comprising transmitting, by the one or more processors, the object field to a participant for participant validation. (Silverbrook‘197, The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 529)).
Regarding Claim 16:
Silverbrook‘197 teaches:
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field. (Silverbrook‘197, A hyperlinked group 866 is a group element 838 which has an associated hyperlink, as shown in FIG. 18. When input occurs through any field element in the group, the hyperlink 844 associated with the group is activated; A hyperlinked group can be used to associate hyperlink behavior with a field such as a checkbox. It can also be used, in conjunction with the “submit delta” attribute of a form hyperlink, to provide continuous input to an application. It can therefore be used to support a “blackboard” interaction model, i.e. where input is captured and therefore shared as soon as it occurs. The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529)).
Regarding Claim 17:
Silverbrook‘197 teaches:
further comprising storing, by the one or more processors and in a knowledge database, at least one of a participant validation of the object field, a participant action associated with the object field or a participant change to the object field, in association with at least one of the document, document type or participant account. (Silverbrook‘197, A hyperlinked group 866 is a group element 838 which has an associated hyperlink, as shown in FIG. 18. When input occurs through any field element in the group, the hyperlink 844 associated with the group is activated; A hyperlinked group can be used to associate hyperlink behavior with a field such as a checkbox. It can also be used, in conjunction with the “submit delta” attribute of a form hyperlink, to provide continuous input to an application. It can therefore be used to support a “blackboard” interaction model, i.e. where input is captured and therefore shared as soon as it occurs. The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529)).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Silverbrook (U.S. Patent Application Publication No. US 2011/0302197A1 hereinafter “Silverbrook‘197”), in view of King (U.S. Patent Application Publication No. US 2010/0183246 A1; hereinafter “King”), and further in view of Grandhi (U.S. Patent Application Publication No. US 2009/0006553 A1; hereinafter “Grandhi”).
Regarding Claim 18:
Silverbrook‘197 teaches:
wherein the document is an image document, [wherein content is locked within an image of the document, and wherein the object field is not interactive prior to the converting]. (Silverbrook‘197, The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images. The raster image processor (RIP) consists of one or more standard DSPs 757 running in parallel. The duplexed print engine controllers consist of custom processors which expand, dither and print page images in real time, synchronized with the operation of the printheads in the print engines. (See, Para. 564) In brief summary, the preferred form of the netpage system employs a computer interface in the form of a mapped surface, that is, a physical surface which contains references to a map of the surface maintained in a computer system. The map references can be queried by an appropriate sensing device. In this preferred form, the netpage system relies on the production of, and human interaction with, netpages. These are pages of text, graphics and images printed on ordinary paper, but which work like Interactive webpages... The ink, however, and thereby the coded data, can be sensed by an optically imaging sensing device and transmitted to the netpage system.” (See, Para. 2, 395-399)).
Silverbrook‘197 and King do not specifically teach wherein content is locked within an image of the document, and wherein the object field is not interactive prior to the converting.
However, Grandhi further teaches the following limitations:
wherein content is locked within an image of the document, and wherein the object field is not interactive prior to the converting. (Grandhi, At 202, a file is checked out to a first user. The file is preferably a rich media file, i.e. containing rich media content such as images, video, audio or a combination thereof At 204, a lock is applied to the file to lock the file for subsequent users, and read-only versions are only allowed to be checked out for the term of the lock. (See, Para. 17; Abstract; Fig. 2 ( elements 202 and 204))).
It would have been obvious to one of ordinary skill in the art before the effective filing of the claimed invention to have modified Silverbrook‘197 and King with the features of Grandhi’s system because this system is “a collaboration tool and technique for rich media environments. In accordance with one aspect, a remote collaboration tool is presented. The remote collaboration tool is hosted by a collaboration computer for enabling collaborative communication of rich media files between a server connected with a rich media data source and a plurality of client computers over a network. The remote collaboration tool includes a locking mechanism for locking all subsequent versions of a rich media file that has been requested by one of the plurality of client computers. The remote collaboration tool further includes a synchronization engine for synchronizing the requested rich media file with all subsequent versions of the rich media file to generate a synchronized rich media file for storage in the rich media data source. A rich media collaborative computing method includes the steps of checking out a rich media file from a server to a first user associated with one of a plurality of client computers, applying a lock to the checked out rich media file for subsequent users, and for subsequent users that request the rich media file from the server, checking out read-only versions of the rich media file based on the lock. The collaboration tool, system and method presented herein provide an easy way to merge audio/video binary data, and to synchronize changes made to rich media sources with minimal resources.” (Grandhi, Para. 6 and 8).
Response to Arguments
With respect to the objection of claims 1, 8, and 18-20, the objections are withdrawn in view of Applicant’s arguments/remarks made in an amendment filed on 05/20/2026. However, new claim objections have been given with regards to Claims 19 and 20. In view of the grounds for the claim objection presented above in this office action, appropriate correction is required.
Applicant's arguments filed on 05/20/2026 have been fully considered, but are not persuasive due to the following reasons:
With respect to the rejection of claims 1-20 under 35 U.S.C. 101, Applicant arguments are moot in view of the grounds of rejections presented above in this office action. The arguments are addressed to the extent they apply to the amended claims.
Applicant argues that “a computer is required to convert the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input. A human cannot convert the object field to an interactive object field that accepts electronic data input, and such a step definitely cannot be reasonably completed in the human mind. Applicant respectfully asserts that enabling fields into interactive object fields that can accept electronic entries cannot possibly be completed by pen and paper or in the human mind. In particular, a piece of paper or human mind cannot accept electronic entries. Moreover, a piece of paper or human mind cannot include interactive object fields. In that regard, Applicant further clarifies the claimed invention to state that the image document (wherein most sections are not able to accept input) includes an object field and "wherein the object field is configured to be enabled as an electronic field that accepts electronic data input" and "wherein the interaction includes the object field accepting electronic data input." Moreover, while a human may be able to search for keywords in a document and determine a location of an object field in a document, Applicant asserts that such steps on thousands of documents cannot be reasonably completed in the human mind. In particular, the claimed invention uses object detection algorithms, uses edge detection, implements grouping algorithms, conducts vicinity assessments, compares lines to other artifacts and analyzes the coordinates of the endpoints, and all of these functions cannot be reasonably completed in the human mind.”
Examiner respectfully disagrees.
Under Step 2A: Prong I, as previously discussed in the Final Rejection-dated 04/08/2026, Examiner respectfully notes that claims, as amended, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of processing a document, which is mitigating risk of document data being compromised and/or errors occurring while processing various documents; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the processing of documents between users and/or entities involved in a transaction, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. Therefore, the series of steps recited in claims 1, 19, and 20, as amended, describe the abstract idea of processing a document, which correspond to Certain Methods of Organizing Human Activity: fundamental economic principles or practices (including hedging, insurance, mitigating risk) and/or commercial or legal interactions. Furthermore, the system limitations, e.g., one or more processors and one or more tangible, non-transitory memories do not necessarily restrict the claim from reciting an abstract idea. Furthermore, Examiner respectfully notes that the claims are first analyzed in the absence of technology to determine if it recites an abstract idea. The additional limitations of technology are then considered to determine if it restricts the claim from reciting an abstract idea. In this case, and as discussed in the Guidance on Patent Subject Matter Eligibility, it is determined that the additional limitations of technology do not necessarily restrict the claim from reciting an abstract idea.
Additionally, Examiner respectfully notes that the recited features in the limitations of amended claims ( Claim 20): “one or more processors; and one or more tangible, non-transitory memories configured to communicate with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising: searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language; determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field; associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required, wherein the tag also at least one of: displays questions about the document or displays information about the document; and converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input” are simply making use of a computer and the computer limitations do not necessarily restrict the claim from reciting an abstract idea as discussed above under Step 2A-Prong I of the 35 U.S.C. 101 rejection.
Hence, Examiner has also considered each and every argument under Step 2A-Prong I, and concludes that these arguments are not persuasive. For example, under Step 2A-Prong I, Examiner considers each and every limitation to determine if the claim recites an abstract idea. In this case, it is determined that the claim recites an abstract idea and the additional limitations of a computer device does not necessarily restrict the claim from reciting an abstract idea. The recited steps, as amended, are abstract in nature as there are no technical/technology improvements as a result of these steps. Thus, the claim recites an abstract idea. Whether the claim integrates the abstract idea into a practical application by providing technical/technology improvements are considered under Step 2A-Prong 2.
Applicant argues that “all of these combined technical functions provide a technical improvement, where the claimed invention uses object detection algorithms, uses edge detection, implements grouping algorithms, conducts vicinity assessments, compares lines to other artifacts and analyzes the coordinates of the endpoints, as contemplated by Core Wireless. Specifically, the claims recite a specific graphical user interface that displays documents with interactive object fields that is more than generally linking the execution of the alleged abstract idea to a generic computer with a generic interface. Moreover, the claims include limitations that disclose a specific manner of displaying a limited set of information to the user, and do not generically, conventionally or broadly display just the document or data about the document. The claims expressly require, for example, that the display data be limited by highlighting the object fields that are interactive. Furthermore, independent claims 1, 19 and 20 include that certain parts of the document are not highlighted and other parts of the document (interactive object fields) are enabled for interaction by the participant. As such, Applicant asserts that the claimed invention is directed to an improved user interface for enabling interaction with object fields. In addition, the claims in ordered combination are a practical application. Thus, the claimed invention is directed to eligible subject matter. The claimed invention recites a specific GUI that displays documents with interactive object fields that is more than generally linking the execution of the alleged abstract idea to a generic computer with a generic interface. Similar to the Core Wireless case, the claims recite structure to the display and structure to the interface functionality such that the claimed invention is more than an instruction to apply the abstract idea with a computer. Like in Core Wireless, the claims expressly require, for example, that the display data be limited by highlighting the object fields that are interactive…..the claimed invention is directed to an improved user interface for enabling interaction with object fields, and not to the abstract idea of processing a document. Dependent claims 2-18 variously depend from dependent claim 1. As such, Applicant asserts that dependent claims 2-18 are eligible for the same reasons as set forth above, in addition to their eligible features.”
Examiner respectfully disagrees.
Under Step 2A: Prong 2, Examiner respectfully notes that there is no improved technology in simply searching, determining, enabling, inputting, creating, tagging, executing, processing, associating, displaying, converting, allowing, accepting, and outputting data (i.e., document data, image data, data input, metadata, questions, signature data , tag information, and etc.). Unlike Core Wireless, as previously discussed in the Final Rejection-dated 04/08/2026, the disclosed invention simply cannot be equated to improvement to technological practices or computers. There is no technical improvement at all. Amended independent claims 1, 19, and 20 recite: “searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language; determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field; associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required, wherein the tag also at least one of: displays questions about the document or displays information about the document; and converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input” where, the recited features in the limitations do not disclose a technical solution to technical problem, but simply a business solution. Specifically, the recited steps, as amended, are merely managing/processing data (MPEP 2106.05(d)(II)) and does not result in computer functionality or technical improvement. Thus, Applicant has simply provided a business method practice of processing documents and document data (document data, image data, data input, metadata, questions, signature data , tag information, and etc.), and no technical solution or improvement has been disclosed.
Additionally, unlike Core Wireless there is no technology/technical improvement as a result of implementing the abstract idea. The recited limitations in the pending claims simply amount to the abstract idea of processing a document. There is no computer functionality improvement or technology improvement. The claim does not provide a technical solution to a technical problem. If there is an improvement, it is to the abstract idea and not to technology. Moreover, Examiner notes that it is important to keep in mind that an improvement in the judicial exception itself (e.g., recited fundamental economic principle or practice and/or commercial interaction) is not an improvement in technology (See, MPEP 2106.05(a)(II)). Thus, the claim does not integrate the abstract idea into a practical application; and these arguments are not persuasive.
Furthermore, as previously discussed in the Final Rejection-dated 04/08/2026, the ‘electronic’ and ‘interactive’ features simply amounts to mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). Thus, the automation feature is not sufficient to show an improvement in computer-functionality or technology/technical improvements (see MPEP 2106.05(a)(1)). Unlike Core Wireless, , as previously discussed in the Final Rejection-dated 04/08/2026, the claim simply makes use of a computer as a tool to apply the abstract idea without transforming the abstract idea into a patent eligible subject matter. The claims, as amended, recite steps at a high level of generality. In addition, all uses of the recited judicial exceptions require such data gathering, inputting and outputting; and, as such, these limitations do not impose any meaningful limits on the claim. The claim simply makes use of a computer/processor as a tool to apply the abstract idea without transforming the abstract idea into a patent eligible subject matter. Moreover, these steps, as amended, are recited as being performed by one or more processors and one or more tangible, non-transitory memories are recited at a high level of generality, and are used as a tool to perform the generic computer function of receiving, processing, and outputting data. See MPEP 2106.05(f). Claims 1, 19, and 20, as amended, recites one or more processors and one or more tangible, non-transitory memories, which are simply used to perform an abstract idea, as discussed above in Step 2A, Prong 1, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). Specifically, the recitation of “one or more processors and one or more tangible, non-transitory memories” in the limitations merely indicates a field of use or technological environment in which the judicial exception is performed. The claims, as amended, merely confines the use of the abstract idea to a particular technological environment; and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception. Thus, Claims 1-20 do not integrate the abstract idea into a practical application. Thus, these arguments are not persuasive.
Hence, Examiner respectfully declines Applicant’s request to withdraw the 35 U.S.C. 101 rejection of claims 1-20.
With respect to Applicant’s assertion regarding the nonstautory double patenting rejection of claims 1-20, Examiner respectfully disagrees. Applicant arguments are moot in view of the grounds of rejections presented above in this office action. Specifically, Examiner respectfully notes that Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 7-12, and 14-20 of U.S. Patent No. 12,169,976. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application are anticipated by patent claims 1-2, 5, 7-12, and 14-20 of U.S. Patent No. 12,169,976. Furthermore, Examiner respectfully notes that 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 AlA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). Hence, Examiner respectfully declines Applicant’s request to hold this rejection in abeyance or withdraw the nonstatutory double patenting rejection of Claims 1-20.
With respect to the rejection of claims 1-20 under 35 U.S.C. 103, Applicant arguments are moot in view of cited language in previously used prior art, as presented above in this office action. The arguments are addressed to the extent they apply to the amended claims
Applicant argues that “that providing cited references that disclose locked content that is inactive is insufficient because the locked content is unlocked by other elements of independent claim 1 …. Applicant respectfully asserts that Grandhi is limited to locking subsequent versions of a rich media file, prior to sending the rich media file to various remote computers that requested the rich media file. As such, the lock limits the remote computers to only checking out read-only versions of the rich media file. Grandhi is also limited to synchronizing the requested rich media file with subsequent versions of the rich media file, thereby generating a synchronized rich media file that is stored in a rich media data source…… Silverbrook '197 does not disclose, and is completely silent regarding, any participant that needs to sign the document. Furthermore, Silverbrook '197 does not disclose, and is completely silent regarding, any notary language. As such, Applicant asserts that Silverbrook '197 does not include "associating, by the one or more processors, the tag with the object field, wherein the tag at least one of indicates that the document requires a notary, displays questions about the document, displays information…. Applicant still asserts that Silverbrook '197 does not disclose converting an inactive object field to an interactive object field to allow the interaction with the object field, as recited in the independent claims….. Silverbrook '197 does not enable interaction with the object fields. Silverbrook '197 is merely interpreting the input into the interactive element. In other words, Silverbrook '197 is not converting the elements to be interactive elements, because the elements are already interactive elements. In fact, Silverbrook '197 states that the form is already interactive such that the "interactive form" be filled in at any time. Applicant asserts that the King disclosure of metadata does not cure the deficiencies of Silverbrook '197 and Grandhi, discussed above. Moreover, Applicant asserts that King is limited to merely storing metadata associated with a file, wherein the metadata is related to creator ID, dates of creation, last modification, last use, keywords, image characteristics, document sources and user comments.”
Examiner respectfully disagrees.
Examiner respectfully notes that Silverbrook‘197 teaches “searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language.” Specifically, Silverbrook‘197 recites that “alternatively, a user may wish to receive information based on keyword searching, even if the keyword is contained in an input element on a netpage. As used herein, the term “keyword” is used to mean a keyword or key-phrase.” (See, Para. 564, 626-627); As illustrated in FIG.90, an entity 1180 has various details 1192 such as name, contact details, etc.; (See, Para. 887); After identifying the primary search terms a set of context terms is identified to help improve query precision. The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914)”. Furthermore, Examiner respectfully notes that Silverbrook‘197 teaches “determining, by the one or more processors, an existence and location of an object field in the document, wherein the document is an image document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input.” Specifically, Silverbrook‘197 recites that “The corresponding page description 5, stored on the netpage network, describes the individual elements. of the netpage. In particular it describes the type and spatial extent (zone) of each interactive element (i.e. text field or button in the example), to allow the netpage: system to correctly interpret input via the netpage; (See, Para. 399); The fixed target structure allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor; (See, Para. 429); There are two kinds of input elements in a netpage description: hyperlinks and form fields. input through a form field can also trigger the activation of an associated hyperlink. The system may recognize or detect the input fields of the document. The fields and hyperlinks may be identified by the tags obtained from the scanned document. (See, Para. 494); determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529); The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images (See, Para. 564); These are pages of text, graphics and images printed on ordinary paper, but which work like Interactive webpages... The ink, however, and thereby the coded data, can be sensed by an optically imaging sensing device and transmitted to the netpage system.” (See, Para. 2, 395-399). Also, Silverbrook‘197 teaches creating, by the one or more processors, a tag with [metadata] about a type of the tag and the object field, wherein the [metadata] includes data about executing the document in the object field. Specifically, Silverbrook‘197 recites that “A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415).
Moreover, Silverbrook‘197 teaches associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature by the participant is required; wherein the tag also at least one of: displays questions about the document or displays information about the document. Specifically, Silverbrook‘197 recites that “A netpage consists of a printed page... Insensibly tagged with references to an online description of the page... It also describes the input elements on the page, including buttons, hyperlinks and Input fields. (See, Para. 415 and 564); an entity 1180 has various details 1192 such as name, contact details, etc. (See, Para. 887); After identifying the primary search terms a set of context terms is Identified to help improve query precision; - The summary specifies that the context terms may be keywords and the names of users. (See, Para. 914); The process consists of determining... whether the field 18 & checkbox and... whether the digital Ink represents a checkmark, and if so assigning... a true value to the field value... alternatively, determining... whether the field is a signature field and if so verifying... the digital Ink as the signature of the pen's owner, with the help of the appropriate registration server, creating... a digital signature of the contents of the corresponding form, also with the help of the registration server and using the pan owner's private signature key relating to the corresponding application... to the field value. (See, Para. 500, 529).” Lastly, Silverbrook‘197 teaches converting, by the one or more processors using the [metadata], the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input. Specifically, Silverbrook‘197 recites that “text written by hand on a netpage is automatically recognized and converted to computer text in the netpage system, allowing forms to be filled in….signatures recorded on a netpage are automatically verified, allowing e-commerce transactions to be securely authorized. In other embodiments, text on a netpage may be clicked or gestured to initiate a search based on keywords indicated by the user. (See, Para. 398-99, 428-29); Extracted content can Include both the visual layout and the document markup (possibly converted to some standard format such as html”, (See, Para. 700); it describes the type and spatial extent (zone) of each interactive element (i.e. text field or button in the example), to allow the netpage: system to correctly interpret input via the netpage; (See, Para. 399); The fixed target structure allow a sensing device such as the netpage pen to detect the tag and infer its three-dimensional orientation relative to the sensor; (See, Para. 429); There are two kinds of input elements in a netpage description: hyperlinks and form fields. input through a form field can also trigger the activation of an associated hyperlink. The system may recognize or detect the input fields of the document. The fields and hyperlinks may be identified by the tags obtained from the scanned document. (See, Para. 494).”
Examiner respectfully notes that Silverbrook‘197 does not specifically teach metadata; however, King further teaches metadata. Specifically, King recites “New and upcoming file systems and their associated databases often have the ability to store a variety of metadata associated with each file. ….Newer file systems allow such extra information as keywords, image characteristics, document sources and user comments to be stored, and in some systems this metadata can be arbitrarily extended. File systems can therefore be used to store information that would be useful in implementing the current system. (See, Para. 291).”
Furthermore, Examiner respectfully notes that Silverbrook‘197 teaches that the document is an image document. Specifically, Silverbrook‘197 recites that “The printing process consists of two decoupled stages: rasterization of page descriptions, and expansion and printing of page images. (See, Para. 564)….These are pages of text, graphics and images printed on ordinary paper, but which work like Interactive webpages... The ink, however, and thereby the coded data, can be sensed by an optically imaging sensing device and transmitted to the netpage system.” (See, Para. 2, 395-399). Examiner respectfully notes that Silverbrook‘197 and King do not specifically teach that content is locked within an image of the document, and wherein the object field is not interactive prior to the converting; however, Grandhi teaches content is locked within an image of the document, and wherein the object field is not interactive prior to the converting. Specifically, Grandhi recites that “At 202, a file is checked out to a first user. The file is preferably a rich media file, i.e. containing rich media content such as images, video, audio or a combination thereof At 204, a lock is applied to the file to lock the file for subsequent users, and read-only versions are only allowed to be checked out for the term of the lock. (See, Para. 17; Abstract; Fig. 2 ( elements 202 and 204)). Thus, Silverbrook‘197 in view of King teaches searching, by one or more processors, words on a document for keywords, wherein the keywords include a name of a participant that needs to sign the document and notary language; determining, by the one or more processors, an existence and location of an object field in the document, wherein the object field is configured to be enabled as an electronic field that accepts electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the object field, wherein the metadata includes data about executing the document in the object field; associating, by the one or more processors, the tag with the object field, wherein the tag indicates that the document requires a notary based on the notary language, and displays areas on the document where a signature is required, wherein the tag also at least one of: displays questions about the document or displays information about the document; and converting, by the one or more processors using the metadata, the object field to an interactive object field to allow interaction with the object field, wherein the interaction includes the interactive object field being configured to accept electronic data input. Also, Silverbrook‘197 in view of King, and further in view of Grandhi teaches that the document is an image document, wherein content is locked within an image of the document, and wherein the object field is not interactive prior to the converting.
Hence, Examiner respectfully declines Applicant’s request to withdraw the 35 U.S.C. 103 rejection of claims 1-20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure is the following:
Cernautan (U.S. Patent Pub. No. US-2019/0370528-A1) “Digitizing handwritten signatures”
Momma (U.S. Patent Pub. No. US-2006/0265593-A1) “Document verification apparatus and document verification method”
Maze (U.S. Patent No. US-2010/0325102-A1) “System and method for managing electronic documents in a litigation context”
Silverbrook (U.S. Patent Application Publication No. US-2007/0038538-A1) “[A] method of copying, using a substrate, object data to a clipboard of a graphical user interface operating system, the substrate having a graphical representation of the object data disposed therein or thereon, the substrate also having coded data disposed therein or thereon, the coded data identifying a plurality of locations on the substrate, the coded data also identifying a layout of the graphical representation of the object data.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED H MUSTAFA whose telephone number is (571)270-7978. The examiner can normally be reached M-F 8:00 - 5:00.
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/MOHAMMED H MUSTAFA/Examiner, Art Unit 3693
/Mike Anderson/Supervisory Patent Examiner, Art Unit 3693
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