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 04/15/2026.
Claims 1, 3, 4, 9, 12-15, 19, and 20 have been amended and are hereby entered.
Claim 18 has been canceled.
Claims 1-17 and 19-20 are currently pending and have been examined.
This action is made 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 statements (IDS) submitted on 03/27/2026, 04/28/2026, and 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.
Claim Objections
Claims 1, 19, and 20 are objected to because of the following informalities:
Claim 1: line 20, Claim 19: line 23, and Claim 20: line 26 recites the limitation “a document.” “A document” is initially and previously recited in Claim 1: line 3, Claim 19: line 6, and Claim 20: line 9. Is the ‘document’ recited in Claim 1: line 20, Claim 19: line 23, and Claim 20: line 26 different than ‘a document’ initially and previously recited in Independent Claim 1: line 3, Claim 19: line 6, and Claim 20: line 9? It appears there is a typographical mistake since the specification only points to one document for this interpretation. For compact examination purposes, Examiner interpreted the instance recited in Claim 1: line 20, Claim 19: line 23, and Claim 20: line 26, after the initial recitation in Claim 1: line 3, Claim 19: line 6, and Claim 20: line 9, as “the document.” Appropriate correction is required.
Claim 1: line 28, Claim 19: line 31, and Claim 20: line 34 recites the limitation: “enabled as one or more electronic fields that accepts the electronic data input.” “Electronic fields that accept electronic data input” is initially and previously recited in Claim 1: lines 7-8, Claim 19: lines 10-11, and Claim 20: lines 13-14. Is the ‘electronic fields that accept electronic data input’ recited in Claim 1: line 28, Claim 19: line 31, and Claim 20: line 34 different than ‘one or more electronic fields that accepts the electronic data input’ initially and previously recited in Independent Claim 1: lines 7-8, Claim 19: lines 10-11, and Claim 20: lines 13-14? It appears there is a typographical mistake since the specification only points to one interpretation for electronic fields that accepts the electronic data input. For compact examination purposes, Examiner interpreted the instance recited in Claim 1: line 28, Claim 19: line 31, and Claim 20: line 34, after the initial recitation in Claim 1: lines 7-8, Claim 19: lines 10-11, and Claim 20: lines 13-14, as “enabled as the one or more electronic fields that accepts the electronic data input.” 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 1-17 and 19-20 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: determining, by the one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields; associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required; converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields, determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users; creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input; storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database; creating, by the one or more processors, a new hash for a new document; comparing, by the one or more processors, the hash with the new hash; and determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing. 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, one or more tangible, non-transitory memories, and knowledge database 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 elements of one or more processors, one or more tangible, non-transitory memories, and knowledge database, 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 of one or more processors, one or more tangible, non-transitory memories, and knowledge database 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 2-17 are directed to a method, which recites steps that describe the abstract idea of processing a document. Specifically, dependent claims 2-17 are directed to a method, reciting a series of steps that describe the 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. Thus, claims 2-17 are directed to an abstract idea. The additional elements of one or more processors, one or more tangible, non-transitory memories, 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, 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 2-17 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 2-17 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 2-17 are directed to an abstract idea.
Thus, claims 1-17 and 19-20 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 1-17 and 19-20 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. 12,175,785. 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 18/943,477
US Patent 12,175,785
For ease of comprehension, below contains only relevant and redacted claim language from the allowed patented application.
Claims 1, 19, and 20.
A method comprising:
determining, by one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input;
creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields;
associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required;
converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields,
determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users;
creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input;
storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database;
creating, by the one or more processors, a new hash for a new document;
comparing, by the one or more processors, the hash with the new hash; and
determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing.
Claim 1.
A method comprising:
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; 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;
creating, by the one or more processors, a tag with metadata about a type of the tag and the location of the object field, wherein the metadata includes data about executing the image document at the location 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 displays areas on the image document where a signature is required;
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
determining, by the one or more processors, a type of the image document based on at least one of the interactive object field, a library of known document titles, known document types, known user-inputted object fields, entities or users;
creating, by the one or more processors, a hash from the metadata about the combination of object fields and the type of image document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the object field is configured to be enabled as the electronic field that accepts the electronic data input;
storing, by the one or more processors, an association of the hash, the metadata and the type of image document in a knowledge database;
creating, by the one or more processors, a new hash for a new image document;
comparing, by the one or more processors, the hash with the new hash; and
determining, by the one or more processors, that the new image document has similar locations of the combination of object fields and is a similar type of image document as the image document based on the comparing.
Claim 2.
further comprising: creating, by the one or more processors, a unique key based on the hash;
finding, by the one or more processors, the document based on the unique key;
updating, by the one or more processors, the document and the metadata based on the unique key.
Claim 2.
further comprising: creating, by the one or more processors, a unique key based on the hash; finding, by the one or more processors, the image document based on the unique key;
updating, by the one or more processors, the image document and the metadata based on the unique key.
Claim 3.
further comprising recording a user action to change the locations of the one or more interactive object fields, in response to a false positive about the determining that the new document having similar locations of the one or more interactive object fields and being the similar type of document.
Claim 3.
further comprising recording a user action to change the locations of the combination of object fields, in response to a false positive about the determining that the new image document having similar locations of the combination of object fields and being the similar type of image document.
Claim 4.
further comprising performing, by the one or more processors, a canonicalization process of the one or more interactive object fields, the known document titles, the known document types, the known user-inputted object fields, the entities and the users, wherein the canonicalization process converts data that involves more than one representation into a standard approved format to help ensure that data conforms to canonical rules.
Claim 4.
further comprising performing, by the one or more processors, a canonicalization process of the combination of object fields, the known document titles, the known document types, the known user-inputted object fields, the entities and the users, wherein the canonicalization process converts data that involves more than one representation into a standard approved format to help ensure that data conforms to canonical rules.
Claim 5.
wherein the determining the metadata about the document includes determining a type of the document based on at least one of a title of the document, location of text in at least a portion of the document, font of text in at least a portion of the document, footer in the document, number of pages of the document, words in certain locations or a library of known document titles.
Claim 6.
wherein the determining the metadata about the image document includes determining a type of the image document based on at least one of a title of the image document, location of text in at least a portion of the image document, font of text in at least a portion of the image document, footer in the image document, number of pages of the image document, words in certain locations or a library of known document titles.
Claim 6.
wherein the title of the document is determined based on at least one of a location of a first word, a font of a second word or a size of a third word.
Claim 7.
wherein the title of the image document is determined based on at least one of a location of a first word, a font of a second word or a size of a third word.
Claim 7.
wherein the metadata includes at least one of page numbers associated with at least some pages of the document or a description of different sections of the document.
Claim 8.
wherein the metadata includes at least one of page numbers associated with at least some pages of the image document or a description of different sections of the image document.
Claim 8.
further comprising acquiring, by the one or more processors, page number data about the document at least one of: in response to the document containing multiple pages; or
by reviewing at least one of patterns of the page number data, common locations for page numbers, locations for a word page or a format of the page number data, in response to the document containing multiple pages.
Claim 9.
further comprising acquiring, by the one or more processors, page number data about the image document, in response to the image document containing multiple pages.
Claim 10. further comprising acquiring, by the one or more processors, page number data about the image document by reviewing at least one of patterns of the page number data, common locations for page numbers, locations for a word page or a format of the page number data, in response to the image document containing multiple pages.
Claim 9.
wherein the creating at least one of the hash or the new hash comprises standardizing the one or more interactive object fields using a canonicalization process.
Claim 14.
wherein the creating at least one of the hash or the new hash comprises standardizing the object fields using a canonicalization process.
Claim 10.
further comprising creating a unique key from at least one of the hash or the new hash.
Claim 15.
further comprising creating a unique key from at least one of the hash or the new hash.
Claim 11.
further comprising incorporating, by the one or more processors, the hash into a QR code that is associated with the document.
Claim 16.
further comprising incorporating, by the one or more processors, the hash into a QR code that is associated with the image document.
Claim 12.
further comprising saving, by the one or more processors and in the knowledge database, at least one of data associated with a false positive about the one or more interactive object fields, an action associated with the false positive, a location of the false positive or document metadata.
Claim 17.
further comprising saving, by the one or more processors and in the knowledge database, at least one of data associated with a false positive about an object field, an action associated with the false positive, a location of the false positive or image document metadata.
Claim 13.
further comprising removing, by the one or more processors, at least one of: the one or more interactive object fields associated with a false positive from the new document, based on data associated with the false positive from the knowledge database;
or the one or more interactive object fields associated with a false positive from the new document after a threshold number of false positives are discovered in the documents, based on data associated with the false positive from the knowledge database.
Claim 18.
further comprising removing, by the one or more processors, an object field associated with a false positive from the new image document, based on data associated with the false positive from the knowledge database.
Claim 19.
further comprising removing, by the one or more processors, an object field associated with a false positive from the new image document after a threshold number of false positives are discovered in the image documents, based on data associated with the false positive from the knowledge database.
Claim 14.
further comprising providing, by the one or more processors and to a user, information about the one or more interactive object fields associated with a false positive, based on data associated with the false positive from the knowledge database.
Claim 20.
further comprising providing, by the one or more processors and to a user, information about an object field associated with a false positive, based on data associated with the false positive from the knowledge database.
Claim 15.
further comprising at least one of adding or adjusting, by the one or more processors, the one or more interactive object fields in the new document, based on at least one of the one or more interactive object fields being added or adjusted in the document in the knowledge database.
Claim 21.
further comprising at least one of adding or adjusting, by the one or more processors, an object field in the new image document, based on at least one of the object field being added or adjusted in the image document in the knowledge database.
Claim 16.
further comprising associating, by the one or more processors, a QR code with the document, wherein the QR code identifies at least one of requirements for the document or a packet that includes the document.
Claim 22.
further comprising associating, by the one or more processors, a QR code with the image document, wherein the QR code identifies at least one of requirements for the image document or a packet that includes the image document.
Claim 17.
further comprising at least one of: converting, by the one or more processors, the document to a new type of document, based on a type of the document;
requesting, by the one or more processors, a service based on the metadata associated with the document; or
adjusting, by the one or more processors, the type of the document for an entity based on the users association with the entity.
Claim 23.
further comprising converting, by the one or more processors, the image document to a new type of image document, based on a type of the image document.
Claim 24. further comprising requesting, by the one or more processors, a service based on the metadata associated with the image document.
Claim 5. further comprising adjusting, by the one or more processors, the type of the image document for an entity based on the users association with the entity.
Prior Art Rejection
Examiner respectfully notes that with respect to the 35 US.C. 103 rejection of claims 1-17 and 19-20, the rejection is withdrawn in view of Applicant’s arguments/remarks made in an amendment filed on 04/15/2026. Specifically, the closest prior art the examiner has been able to locate are Silverbrook (U.S. Patent Application Publication No. US 2007/0038538A1; hereinafter “Silverbrook‘538”), in view of King (U.S. Patent Application Publication No. US 2010/0183246 A1; hereinafter “King”), further in view of US 2011/0302197 A1 to Silverbrook et al. (hereinafter Silverbrook'197), further in view of Momma (U.S. Patent Application Publication No. US 2006/0265593A1 hereinafter “Momma”), further in view of Cernautan (U.S. Patent Application Publication No. US 2019/0370528A1 hereinafter “Cernautan”). While Silverbrook‘538, King, Silverbrook‘197, Momma, and Cernautan are similar to the instant application in many respects, there are clear patentable distinctions. Unlike the prior art, the present invention teaches a method, an article of manufacture, and 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: determining, by the one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields; associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required; converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields, determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users; creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input; storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database; creating, by the one or more processors, a new hash for a new document; comparing, by the one or more processors, the hash with the new hash; and determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing.
Independently the claims are obvious; however, the claims as a whole are not obvious because the examiner would have to improperly use the claims as a road map to combine the individual obvious claims together. The limitations of the present invention below teaches the following elements that eludes the prior art search. Specifically, the claim limitations that resulted in no combination of the prior arts to be found to render the claims obvious without applying improper hindsight are: “determining, by the one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields; associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required; converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields, determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users; creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input; storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database; creating, by the one or more processors, a new hash for a new document; comparing, by the one or more processors, the hash with the new hash; and determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing.”
Hence, no combination of the prior arts were found to render the claims obvious without applying improper hindsight; thus, the claims are novel and non-obvious.
Response to Arguments
With respect to the 35 U.S.C. 103 rejection of claims 1-17 and 19-20, the rejection is withdrawn in view of Applicant’s arguments/remarks made in an amendment filed on 04/15/2026.
Applicant's arguments filed on 04/15/2026 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 “the claims recite features that, when viewed with the entirety of the claimed invention, meaningfully integrate the cited judicial exception into practical application. These limitations when viewed along with the entirety of the claimed invention, meaningfully integrate the alleged judicial exception of processing a document into a specific technological environment of an improved user interface for enabling interaction with object fields. 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. 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.". …. Applicant asserts that the claimed invention enables fields in a document by converting the fields into interactive object fields. Such interactive object fields are then able to accept electronic entries. 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.….. Applicant asserts that the amended claimed invention is patent eligible under the same reasoning set forth in Core Wireless. 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. Like in Core Wireless, the claims expressly require, for example, that the display data be limited by highlighting the object fields that are interactive. Claim 1 further includes, like in Core Wireless, 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, and not to the abstract idea of processing a document. Applicant asserts that the claimed invention provides a practical application of the abstract idea alleged by the Examiner, such that the claimed invention is not directed to the alleged abstract idea. The claimed invention includes the additional limitations that track the limitations of Core Wireless and provide for integration into a practical application. Dependent claims 2-17 variously depend from dependent claim 1. As such, Applicant asserts that dependent claims 2-17 are eligible for the same reasons as set forth above, in addition to their eligible features.”
Examiner respectfully disagrees.
Under Step 2A: Prong 1, 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, one or more tangible, non-transitory memories, and knowledge database 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: determining, by the one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields; associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required; converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields, determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users; creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input; storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database; creating, by the one or more processors, a new hash for a new document; comparing, by the one or more processors, the hash with the new hash; and determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing” 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 1 of the 35 U.S.C. 101 rejection.
Hence, Examiner has also considered each and every argument under Step 2A-Prong 1, and concludes that these arguments are not persuasive. For example, under Step 2A-Prong 1, 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.
Under Step 2A: Prong 2, Examiner respectfully notes that there is no improved technology in simply determining, creating, executing, associating, tagging, converting, enabling, accepting, storing, comparing, and outputting data (i.e., document data, image data, data input, metadata, questions, signature data , tag information, and etc.). Unlike Core Wireless, 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: “determining, by the one or more processors, an existence and location of one or more object fields in a document, wherein the document is an image document, wherein content is locked within an image of the document, wherein the one or more object fields are not interactive, and wherein the one or more object fields are configured to be enabled as electronic fields that accept electronic data input; creating, by the one or more processors, a tag with metadata about a type of the tag and the one or more object fields, wherein the metadata includes data about executing the document in the one or more object fields; associating, by the one or more processors, the tag with the one or more object fields, 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 displays areas on the document where a signature is required; converting, by the one or more processors using the metadata, the one or more object fields to one or more interactive object fields to allow interaction with the one or more interactive object fields, determining, by the one or more processors, a type of a document based on at least one of the one or more interactive object fields, a library of known document titles, known document types, known user-inputted object fields, entities or users; creating, by the one or more processors, a hash from metadata about the one or more interactive object fields and a type of document, wherein the hash converts the metadata into an output string with a fixed number of characters, and wherein the one or more interactive object fields are configured to be enabled as one or more electronic fields that accepts the electronic data input; storing, by the one or more processors, an association of the hash, the metadata and the type of document in a knowledge database; creating, by the one or more processors, a new hash for a new document; comparing, by the one or more processors, the hash with the new hash; and determining, by the one or more processors, that the new document has similar locations of the one or more interactive object fields and is a similar type of document as the document based on the comparing;” 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.
Moreover, 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, the ‘electronic ( 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, 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, one or more tangible, non-transitory memories, and knowledge database 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 o one or more processors, one or more tangible, non-transitory memories, and knowledge database, 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, one or more tangible, non-transitory memories, and knowledge database” 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 1-17 and 19-20 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. 12,175,785. 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. 12,175,785. 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 1-17 and 19-20.
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”
Maze (U.S. Patent No. US-2010/0325102-A1) “System and method for managing electronic documents in a litigation context”
Silverbrook’538 (U.S. Patent Application Publication No. US 2007/0038538-A1) “Method and system for selection”
King (U.S. Patent Application Publication No. US 2010/0183246-A1) “Data capture from rendered documents using handheld device”
Silverbrook'197 (U.S. Patent Application Publication No. 2011/0302197-A1) “System for providing information via context searching of printed substrate”
Momma (U.S. Patent Application Publication No. US 2006/0265593-A1) “Document verification apparatus and document verification method”
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
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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