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 .
Response to Amendment
Applicant’s amendment filed 03 August 2026 amends claims 1, 3, 6, and 8. Claims 21-25 have been added. Applicant’s amendment has been fully considered and entered.
Response to Arguments
Applicant argues on pages 7-8 of the response, “However, Ono does not disclose or suggest that ‘each tag, of the plurality of tags, indicates a respective location of each field to allow a recipient to re-create the document,’ Rather, Ono discloses that the tag information is used ‘so that the viewer can easily recognize[] a relationship between the content and the tag information associated with the content.’…That is, Ono describes superimposing tag information on content to relay additional information to a user.” In response, the “to allow…” limitation represents intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,550,957. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include all the limitations of the ‘957 patent.
Instant Application
U.S. Patent No. 11,550,957
identifying, based on an automated analysis of a document, a plurality of fields of user-entered text, wherein at least one field, of the plurality of fields, comprises personally identifiable information; (Claim 1)
identifying, based on an automated analysis of a document, two or more fields of user-entered text; (Claim 1)
Examiner notes that the content of the claimed fields is never functionally utilized outside of simply being removed. Therefore, the specific type of content claimed (i.e., personally identifiable information) represents non-functional descriptive material that is not given patentable weight. See MPEP 2111.04-2111.05.
removing the plurality of fields from the document; (Claim 1)
extracting each of the two or more fields of user-entered text from the document; (Claim 1)
transforming, using a neural network, each field, of the plurality of fields, into an image that obfuscates the respective field while the document is in-transit to a second computing device; (Claim 1)
converting a first field of user-entered text, of the two or more fields of extracted and tagged user-entered text, into a first image using a neural network, wherein the first image comprises: a graphical representation of the first field of user-entered text that is configured to obfuscate the first field of user-entered text while the document is in-transit to a second device (Claim 1)
generating a plurality of tags, wherein each tag, of the plurality of tags, indicates a respective location of each field; (Claim 1)
tagging each of the two or more extracted fields of user-entered text with a field identifier and a location of the user-entered text within the document; (Claim 1)
and transmitting, to the second computing device, an electronic communication comprising the document with the plurality of fields removed, the plurality of images, and the plurality of tags. (Claim 1)
and transmitting, to the second device, the first image and the document. (Claim 1)
…wherein the first image comprises: a graphical representation of the first field of user-entered text that is configured to obfuscate the first field of user-entered text while the document is in-transit to a second device; and a first tag…(Claim 1)
Claims 21, 23, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,550,957, in view of Yousfi, US Publication No. 2017/0372096. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include all the limitations of the ‘957 patent except the secure connection requirement.
Yousfi discloses the transmission of potentially private information over an encrypted link ([0034]), which meets the limitation of wherein transmitting the electronic communication comprises transmitting the electronic communication via a secure connection. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the claims of the ‘957 patent to have included transmission over an encrypted link in order to provide increased security as suggested by Yousfi ([0034]).
Claims 1-15, 22, 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,197,623. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include all the limitations of the ‘623 patent.
Instant Application
U.S. Patent No. 12,197,623
identifying, based on an automated analysis of a document, a plurality of fields of user-entered text, wherein at least one field, of the plurality of fields, comprises personally identifiable information; (Claim 1)
identifying, based on an automated analysis of a document, two or more fields of user-entered text, wherein the two or more fields of user-entered text comprise personally identifiable information; (Claim 1)
removing the plurality of fields from the document; (Claim 1)
removing a first field of user-entered text, of the two or more fields of user-entered text, from the document; removing a second field of user-entered text, of the two or more fields of user-entered text, from the document; (Claim 1)
transforming, using a neural network, each field, of the plurality of fields, into an image that obfuscates the respective field while the document is in-transit to a second computing device; (Claim 1)
transforming, using a neural network, the first field of user-entered text into a first image that obfuscates the first field of user-entered text while the document is in-transit to a second computing device; (Claim 1)
generating a plurality of tags, wherein each tag, of the plurality of tags, indicates a respective location of each field; (Claim 1)
generating a first tag associated with the first image, wherein the first tag is used to recreate the document by indicating a first location of the first field of user-entered text in the document;
generating a second tag associated with the second image, wherein the second tag is used to recreate the document by indicating a second location of the second field of user-entered text in the document; (Claim 1)
and transmitting, to the second computing device, an electronic communication comprising the document with the plurality of fields removed, the plurality of images, and the plurality of tags. (Claim 1)
and transmitting, to the second computing device, an electronic communication comprising the document with the two or more fields of user-entered text removed, the first image, the first tag, the second image, and the second tag. (Claim 1)
Claims 21, 23, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,197,623, in view of Yousfi, US Publication No. 2017/0372096. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application include all the limitations of the ‘623 patent except the secure connection requirement.
Yousfi discloses the transmission of potentially private information over an encrypted link ([0034]), which meets the limitation of wherein transmitting the electronic communication comprises transmitting the electronic communication via a secure connection. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the claims of the ‘623 patent to have included transmission over an encrypted link in order to provide increased security as suggested by Yousfi ([0034]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-10, 22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kompalli, U.S. Publication No. 2017/0317983, in view of Reed, “Generative Adversarial Text to Image Synthesis”, published 2016, and further in view of Ono, U.S. Publication No. 2015/0221114. Referring to claim 1, Kompalli discloses scanning documents and analyzing the scanned documents to identify text regions with in the document ([0071]-[0072]) such that the fields of text could include personally identifiable information such as social security numbers and dates of birth ([0023]: paragraph [0022] suggests that the text could be handwritten which would be a form of user-entered text), which meets the limitation of identifying, based on an automated analysis of a document, a plurality of fields of user-entered text, wherein at least one field, of the plurality of fields, comprises personally identifiable information. The text regions of the document can be replaced with scrambled images to created an obfuscated document ([0072]), which meets the limitation of removing the user-entered text from the plurality of fields, transforming, [using a neural network], the user-entered text in each field, of the plurality of fields, into an image that obfuscates the respective field while the document is in-transit to a second computing device. The obfuscated document is transmitted to a server ([0072]: server reads on the claimed second computing device), which meets the limitation of transmitting, to the second computing device, an electronic communication comprising the document with the plurality of fields removed, the plurality of images, [and the plurality of tags].
Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of transforming, using a neural network, each field, of the plurality of fields, into an image. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Kompalli does not disclose the generation of tags that indicate the text region locations. Ono discloses generating tag information from received input information such that the tag information includes position information that points to the content ([0036] & [0088]: as applied to Kompalli, the tags would be included in the obfuscated document that is transmitted; Examiner notes that the ”to allow…” limitation represents intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim), which meets the limitation of generating a plurality of tags, wherein each tag, of the plurality of tags, indicates a respective location of each field to allow a recipient to re-create the document, transmitting the plurality of tags. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the text region replacement of Kompalli to have included the generation of tags in order to provide the document viewer with an easily understood relationship between the document and the tagged region as suggested by Ono ([0010]).
Referring to claim 2, Kompalli discloses that the text regions of the document can be replaced with scrambled images to create an obfuscated document ([0072]), which meets the limitation of [encrypting], prior to the transmitting the electronic communication, the plurality of image. The obfuscated document is transmitted to a server ([0072]: server reads on the claimed second computing device), which meets the limitation of transmitting, to the second computing device, the plurality of [encrypted] images.
Kompalli does not disclose that encryption is utilized to scramble the images and create the obfuscated document. Kompalli does disclose the use of encryption as a form of obfuscation that includes encrypting images prior to transmission ([0023]), which meets the limitation of encrypting, prior to the transmitting the electronic communication, the plurality of images, and transmitting, to the second computing device, the plurality of encrypted images. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the obfuscation of Kompalli to have been modified such that the scrambled images are additionally encrypted prior to transmission in order to preserve the privacy of the image data from unauthorized parties as suggested by Kompalli ([0023]).
Referring to claim 3, Kompalli discloses that the text regions are identified in the document using segmentation ([0072]), which meets the limitation of identifying, during the automated analysis of the document, the plurality of fields of user-entered text using image segmentation.
Referring to claim 4, Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of transforming a first field of user-entered text into a first image using a text-to-image transformation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Referring to claim 5, Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of wherein the neural network comprises a generative adversarial network (GAN). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Referring to claim 6, Kompalli discloses a system that includes a processor 270, and memory 210 ([0026] & [0029]), which meets the limitation of one or more processors, and memory storing instructions that, when executed by the one or more processors, cause the computing device to. The system performs scanning of documents and analyzing the scanned documents to identify text regions with in the document ([0071]-[0072]) such that the fields of text could include personally identifiable information such as social security numbers and dates of birth ([0023]: paragraph [0022] suggests that the text could be handwritten which would be a form of user-entered text), which meets the limitation of identify, based on an automated analysis of a document, a plurality of fields of user-entered text, wherein at least one field, of the plurality of fields, comprises personally identifiable information. The text regions of the document can be replaced with scrambled images to create an obfuscated document ([0072]), which meets the limitation of remove the user-entered text from the plurality of fields, transform, [using a neural network], the user-entered text in each field, of the plurality of fields, into an image that obfuscates the respective field while the document is in-transit to a second computing device. The obfuscated document is transmitted to a server ([0072]: server reads on the claimed second computing device), which meets the limitation of transmit, to the second computing device, an electronic communication comprising the document with the plurality of fields removed, the plurality of images, [and the plurality of tags].
Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of transform, using a neural network, each field, of the plurality of fields, into an image. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Kompalli does not disclose the generation of tags that indicate the text region locations. Ono discloses generating tag information from received input information such that the tag information includes position information that points to the content ([0036] & [0088]: as applied to Kompalli, the tags would be included in the obfuscated document that is transmitted; the ”to allow…” limitation represents intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim), which meets the limitation of generate a plurality of tags, wherein each tag, of the plurality of tags, indicates a respective location of each field to allow a recipient to re-create the document, transmit the plurality of tags. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the text region replacement of Kompalli to have included the generation of tags in order to provide the document viewer with an easily understood relationship between the document and the tagged region as suggested by Ono ([0010]).
Referring to claim 7, Kompalli discloses that the text regions of the document can be replaced with scrambled images to create an obfuscated document ([0072]), which meets the limitation of [encrypt], prior to the transmitting the electronic communication, the plurality of image. The obfuscated document is transmitted to a server ([0072]: server reads on the claimed second computing device), which meets the limitation of transmitting, to the second computing device, the plurality of [encrypted] images.
Kompalli does not disclose that encryption is utilized to scramble the images and create the obfuscated document. Kompalli does disclose the use of encryption as a form of obfuscation that includes encrypting images prior to transmission ([0023]), which meets the limitation of encrypt, prior to the transmitting the electronic communication, the plurality of images, and transmitting, to the second computing device, the plurality of encrypted images. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the obfuscation of Kompalli to have been modified such that the scrambled images are additionally encrypted prior to transmission in order to preserve the privacy of the image data from unauthorized parties as suggested by Kompalli ([0023]).
Referring to claim 8, Kompalli discloses that the text regions are identified in the document using segmentation ([0072]), which meets the limitation of identify, during the automated analysis of the document, the plurality of fields of user-entered text using image segmentation.
Referring to claim 9, Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of transform a first field of user-entered text into a first image using a text-to-image transformation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Referring to claim 10, Kompalli does not disclose that the images are created using a neural network. Reed discloses using generative adversarial networks (GANs) to generate images from text (Abstract), which meets the limitation of wherein the neural network comprises a generative adversarial network (GAN). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the replacement images of Kompalli to have been generated using a generative adversarial network (GAN) in order to provide the generation of images that are plausible and highly compelling as suggested by Reed (Abstract).
Referring to claims 22, 24, Kompalli discloses that the text regions with in the document ([0071]-[0072]) could include personally identifiable information such as social security numbers and dates of birth ([0023]), which meets the limitation of wherein the user-entered text comprises personally identifiable information.
Claims 21, 23 are rejected under 35 U.S.C. 103 as being unpatentable over Kompalli, U.S. Publication No. 2017/0317983, in view of Reed, “Generative Adversarial Text to Image Synthesis”, published 2016, in view of Ono, U.S. Publication No. 2015/0221114, and further in view of Yousfi, US Publication No. 2017/0372096. Referring to claims 21, 23, Kompalli discloses that the obfuscated document is transmitted to a server ([0072]). Kompalli does not specify that the transmission is over a secure connection.
Yousfi discloses the transmission of potentially private information over an encrypted link ([0034]), which meets the limitation of wherein transmitting the electronic communication comprises transmitting the electronic communication via a secure connection. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the obfuscated documents of Kompalli to have been transmitted over an encrypted link in order to provide increased security as suggested by Yousfi ([0034]).
Allowable Subject Matter
Claims 11-15, 25 are not rejected in view of the prior art and would be allowable if the non-statutory double patenting rejections are overcome.
The following is an examiner’s statement of reasons for allowance:
The prior art does not disclose or make obvious the claimed second computing device that receives a document with a plurality of fields of user-entered text removed, a plurality of images, and a plurality of tags wherein each tag, of the plurality of tags, indicates a location of a field of user-entered text in the document. The second computing device transforming, using a neural network, each image, of the plurality of images, into a respective field of user-entered text, and reconstructing, using the plurality of tags, a complete document by combining the respective fields of user-entered text and the received document.
The closest prior art Kompalli disclose a server that receives an obfuscated document with text regions replaced ([0072] & [0074]) such that the server processes the scrambled images from the obfuscated document to recognize the removed text information ([0075]). However, Kompalli specifically does not reconstruct the original document with the original text region information.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN E LANIER whose telephone number is (571)272-3805. The examiner can normally be reached M-Th: 5:30-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Lagor can be reached at 5712705143. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN E LANIER/Primary Examiner, Art Unit 2437
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