DETAILED ACTION
This Office action has been issued in response to amendment filed January 13, 2026.
Claims 11, 12, 14, 15, 17-19 and 23-27 have been amended. Claims 13 and 20-22 have been canceled. New claim 28 is presented. Currently, claims 11, 12, 14-19 and 23-28 are pending. Applicant’s arguments are carefully and respectfully considered and some are persuasive, while others are not. Accordingly, rejections have been removed where arguments were persuasive, but rejections have been maintained where arguments were not persuasive. Also, a new rejections based on the newly added amendments have been set forth. Accordingly, claims 11, 12, 14-19 and 23-28 are rejected and this action has been made FINAL, as necessitated by amendment.
Response to Arguments
Applicant’s arguments directed to 35 USC 101 rejection have been fully considered. The claim recited limitations assign, to the first electronic file, first identification information used to control the first electronic file can me mental process. Further, the amended claim limitations display a screen including a preview of the second electronic file generated by the predetermined processing of the external service system in response to an operation to display the second electronic file. The limitations can be interpreted as a user using a separate system or any platform, set up to perform specific, predefine or advance set of operation and viewing a file or data without fully opening or processing, such as how it looks like when printed, how it will appear in a browser or how it is render a specific format. The limitations are merely describing types of output operations. The limitations are routine and conventional. The claim recited limitations are abstract idea and does not integrate the abstract idea into a practical application. As such, the limitations are hereby sustained.
Applicant’s remarks and arguments with regards to 35 USC 103 rejection presented on 01/13/26 have been fully considered but they are moot in view of the new ground of rejection presented in this office action.
Claim Rejections – 35 USC § 101
35 USC 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture and composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title
5. Claims 11, 12, 14-19 and 23-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter, e.g., claims 11, 12, 14-19 and 23-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 11, 12, 14-19 and 23-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The judicial exception is not integrated into a practical application.
Step 1. The apparatus of claims 11, 12, 14-16, 19, 25 and 28, method of claims 17, 23 and 26 and non-transitory recording medium of claims 18, 24 and 27 are directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. Prong one of the 2019 PEG:
1. In accordance with Step 2A, prong one, the limitations are directed to additional elements include apparatus, terminal, memory, non-transitory recording medium.
2. The limitations are recited in claims 11, 17 and 18 are receive, first electronic file, and a request for processing the first electronic file; assign, to the first electronic file, first identification information used to control the first electronic file; transmit first electronic file via a network that perform predetermined processing, receive, via the network, second identification information assigned by the external service system to control the first electronic file; transmit a second request to acquire a second electronic file, including the second identification information; acquire, via the network from the external service system, display the second electronic data in response to an operation to display the second electronic data etc.
is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of the generic computer components. That is, other than reciting apparatus, terminal, memory, non-transitory recording medium, nothing in the claim element precludes the step from practically being performed in the mind. The steps can be done my nominally, insignificantly or can consider as a data gathering performance. Further, the limitations can interpret as data over a network, which is routine and conventional. Thus, the limitations are directed to abstract mental process and can be manually performed by human. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls with mental process grouping of abstract ideas. The subject matter can be merely interpreted as associating, requesting electronic data using computing systems. Further, the limitations of assign steps can be interpreted as directed to mental process. The other steps as recited in the claims such that receive, transmit and store, each of the steps can be directed to routine computer functions. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components, then it falls with mental process grouping of abstract ideas.
With respect to Step 2A, Prong two of the 2019 PEG: the judicial exception is not integrated into a practical application. In particular, the claim only recites apparatus, terminal, memory, non-transitory recording medium. The apparatus, terminal, memory, non-transitory recording medium in both steps is recited at a high-level of generality or insignificant extra solution activity such that it amounts no more than mere instructions to apply the exception using a generic computer component, Accordingly, these additional element (apparatus, terminal, memory, non-transitory recording medium) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B.
Claims 11, 17 and 18 recited additional limitations, such that store, second identification information in association with the first identification information. These limitations are a context which encompasses two pieces of information are store in an association or there are as association between two identifiers. Further, the limitation can also interpret as association between two identifiers for the same object, which are merely well known for ordinary skill in the art. Furthermore, the amended claim limitations display a screen including a preview of the second electronic file generated by the predetermined processing of the external service system in response to an operation to display the second electronic file. The limitations can be interpreted as a user using a separate system or any platform, set up to perform specific, predefine or advance set of operation and viewing a file or data without fully opening or processing, such as how it looks like when printed, how it will appear in a browser or how it is render a specific format. The limitations are describing types of output operations. The limitations are routine and conventional. The additional elements are broadly applied to the abstract idea at a high level of generality, they are directed to extra solution activity or they operate in a well-understood, routine, and conventional manner (MPEP § 2106.05(f); MPEP § 2106.05(d)(II)).Receiving or transmitting data over a network, e.g., using the internet to gather data (e.g., Symantec...;TLI Communications LLC v. AV Auto. LLC...; OIP Techs., Inc., v. Amazon.com, Inc... ; buySAFE, Inc. v. Google, Inc...; Storing and retrieving information in memory (e.g. Versata Dev. Group, Inc. v. SAP Am., Inc..). Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amount to nothing more than generic computer function merely used to implement an abstract idea, such as an idea that could be done by human manipulation of data. Using generic computing components (apparatus, terminal, memory, non-transitory recording medium) does not amount to significantly more than the abstract and is not enough to transform an abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible. Accordingly, the claims are directed to an abstract idea.
Dependent claim 12 recites storage location of the second electronic file, which is storing data in a computing device, which are routine and conventional. Dependent claims 14-15 recited the limitations of second electronic file including the second identification information, control the first electronic file, transmits the second request repeatedly. These limitations can interpret such as a human can assign which is a mental process. Also, a human can request and receive and transfer information, frequently receive information (e.g., repeatedly) via telecommunication network, which are routine and conventional. Dependent claim 16 recited the limitations of the second request in response to a notification of completion of the processing, received from the external service system. These limitations can interpret an automatic configuration of setting (when to act or perform) among computer systems. The limitations are mental process. Dependent claim 19, recited the limitations of electronic file is an electronic contract document, which can be form of an emails. The limitations are field of use and abstract idea. Dependent claim 25 recited the limitations of second identification information included in the second request. The limitations are storing, combining and transmitting information that can include request or response, which are routine and conventional. Dependent claims 23 and 24 are same scope as claim 19 and are similarly rejected. Dependent claims 26 and 27 are same scope as claim 19 and are similarly rejected. The claim recited limitations are merely abstract idea and does not integrate the abstract idea into a practical application.
Claim Rejections - 35 USC § 103
6. 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.
7. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
8. Claims 11, 12, 14-19 and 23-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lagumbay et al. (US 2020/0092436 A1), hereinafter Lagumbay in view of Tasaka et al. (US 2009/0271452 A1), hereinafter Tasaka.
As for claim 11, Lagumbay teaches an information processing apparatus comprising circuitry configured to: receive, from a terminal, a first electronic file and a request for processing the first electronic file (see [0056], an image based on the document image read by the image reading device, or print data received from the terminal device connected to the network, [0067], acquire the image of the document for which the approval by the approver is requested by the applicant, [0068]);
assign, to the first electronic file, first identification information used to control the first electronic file (see [0070], image identification information for identifying the image acquired by the image reading device);
transmit the first electronic file via a network to an external to an external service system that performs predetermined processing; receive, via the network from the external service system, second identification information assigned by the external service system to control the first electronic file; store, in a memory, the second identification information……the first identification information; transmit a second request to acquire a second electronic file which is generated by the predetermined processing performed on the first electronic file, including the second identification information (see Fig., 2, [0037], e.g., document approval management system according to the first embodiment includes an image forming apparatus, a document management server, and a mail server, connected to each other via a network. A terminal device of an approver is connected to the image forming apparatus, via the network, [0073]-[0074], the request is transmitted to the document management server, from which it is transmitted, via the mail server, to the approver, who will perform the predetermining processing on the first electronic data. [0076], e.g., the authentication information of the approver);
acquire, via the network from the external service system, the second electronic file indicated by the second identification information; and cause the information processing apparatus to display a screen including a……of the second electronic file generated by the predetermined processing on the external service system in response to an operation to display the second electronic data (see [0005], e.g., image identification information for identifying the image acquired by the image acquisition device, generates an image with coded image, by adding the coded image created by the coded image creator to the image, [0049], the image forming apparatus execute a predetermined function, an enter key for confirming the operation of the user, [0093], e.g., document management application displayed on the display device, the select button corresponding to the document management application has been touched is outputted to the controller, and the controller activates the document management application according to the detection signal. Then the controller causes the display device to display an authentication information. User to input screen displayed on the display device).
Lagumbay teaches the claimed invention including the limitations of the second identification information, display a screen ([0005], [0093]). Lagumbay do not explicitly teaches the limitations of second identification information in association with the first identification information; a preview of the second electronic file; However, in the same field of endeavor, Tasaka teaches the limitations of second identification information in association with the first identification information; second identification information in association with the first identification information; a preview of the second electronic file (see [0044], document ID is information identifying the information element included in the document , the display area is information indicating an area in which the information element is displayed in the page. The count is information indicating a count number how many times the information element is copied, [0088], a screen illustrated a display, [0092], e.g., preview a document page in which a page of a document including the partial image of the selected thumbnail is displayed, [0072]).
Lagumbay and Tasaka both references teach the features that are directed to analogous art and they are from the same field of endeavor, such as system and method for document or various types of file processing using one or more servers or via network. Identifying information on the documents, files or objects.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Tasaka to further include Lagumbay’s system for managing document information and store a second document information including a second information element, also copying a first information element included in a first document information. Thus provide an easier output for downloading, printing, transmitting or the like. The storing document in combination also easier to comprehend an execution situation of the output (see Tasaka, [0005]).
As for claim 17,
The limitations therein have substantially the same scope as claim 11 because claim 17 is a method claim for implementing those steps of claim 11. Therefore, claim 17 is rejected for at least the same reason as claim 11 hereinabove.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Tasaka to further include Lagumbay’s system for managing document information and store a second document information including a second information element, also copying a first information element included in a first document information. Thus provide an easier output for downloading, printing, transmitting or the like. The storing document in combination also easier to comprehend an execution situation of the output (see Tasaka, [0005]).
As for claim 18,
The limitations therein have substantially the same scope as claim 1 because claim 18 is a non-transitory recording medium claim for implementing those steps of claim 11. Therefore, claim 18 is rejected for at least the same reason as claim 11 hereinabove.
It would have been obvious to one of ordinary skill in the art at the time of the invention for Tasaka to further include Lagumbay’s system for managing document information and store a second document information including a second information element, also copying a first information element included in a first document information. Thus provide an easier output for downloading, printing, transmitting or the like. The storing document in combination also easier to comprehend an execution situation of the output (see Tasaka, [0005]).
As to claim 12, this claim is rejected based on the same reason as above to reject the claim above and are similarly rejected including the following:
Lagumbay and Tasaka teaches:
wherein the circuitry acquires, from the external service system, information on the second electronic file associated with the second identification information, and the information one the second electronic file includes the second identification information or information indicating a storage location of the second electronic file (see Lagumbay, [0110]; Also see Tasaka, [0044]).
As to claim 14, this claim is rejected based on the same reason as above to reject the claim above and are similarly rejected including the following:
Lagumbay and Okabe teaches:
wherein the circuitry: transmits, to the external service system, the second request which includes a request for transmitting, to the information processing apparatus, information on the second electronic file having been generated by the processing on the first electronic file performed by the external service system, the information on second electronic file including the second identification information; receives the second electronic file and the information on the second electronic file transmitted from the external service system based on the request for transmitting; and stores, in the memory, the information on the second electronic file in association with the first identification information used by the information processing apparatus to control the first electronic file (see Lagumbay, Fig. 1, [0071], [0110]; Also see, Tasaka, [0044]).
As to claim 15, this claim is rejected based on the same reason as above to reject the claim above and are similarly rejected including the following:
Lagumbay and Tasaka teaches:
wherein the circuitry transmits the request for transmitting at regular repeatedly (see Lagumbay, [0095]).
As to claim 16, this claim is rejected based on the same reason as above to reject the claim above and are similarly rejected including the following:
Lagumbay and Tasaka teaches:
wherein the circuitry transmits the second request in response to a notification of completion of the processing, received from the external service system (see Lagumbay, [0123]).
As to claim 19, this claim is rejected based on the same reason as above to reject the claim above and are similarly rejected including the following:
Lagumbay and Tasaka teaches:
wherein the first electronic file is an electronic contract document (see Fig. 1, [0038]).
Claims 23 and 26 are corresponds in scope claims 19 and 25 and are similarly rejected.
Claims 24 and 27 are corresponds in scope claims 19 and 25 and are similarly rejected.
Prior Arts
9. US 2009/0271452 A1 teaches associating with a second information element identification information identifying the second information element, the copy relationship information being associated with first information element identification information in a copy relationship management information in which information element identification information identifying the information element is associated with the copy relationship information indicating a copy relationship of the information element, as the association information (claim 2).
US 2006/0170966 A1 teaches association information associated with identification information of the document data, and a transmission control unit which, for document data having identification information not associated with the specifying information in the association information, transmits print data associated with the document data ([0008]).
WO2012/120560 teaches identification information of the new document in the list corresponding to the first rem. Include attribute information for each list, representing whether the attribute of the list is the first or the second attribute (abstract).
Also see US 20070179984, US 20100241630, US 20060170966, US 20120272188, US 20160364415, US 8190563, WO2014128759, US 20090070348, US 20130191322, these references also read the claim recited limitation. These references are state of the art at the time of the claimed invention.
Conclusion
10. The examiner suggests, in response to this Office action, support being shown for language added to any original claims on amendment and any new claims. That is, indicate support for newly added claim language by specifically pointing to page(s) and line no(s) in the specification and/or drawing figure(s). This will assist the examiner in prosecuting the application (see 37 C.F.R. § 1.75(d)(1), 37 C.F.R. § 1.83(f)).
11. The prior art made of record on form PTO-892 and not relied upon is considered pertinent to applicant's disclosure. Applicant is required under 37 C.F.R. § 1.111(c) to consider these references fully when responding to this action (see MPEP § 7.96). Applicant is advised to clearly point out the patentable novelty which he or she thinks the claims present, in view of the state of the art disclosed by the references cited or the objections made. He or she must also show how the amendments avoid such references or objections See 37 CFR 1.111(c).
12. 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 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.
13. Any inquiry concerning this communication or earlier communication from the examiner should be directed to Daniel A Kuddus whose telephone number is (571) 270-1722. The examiner can normally be reached on Monday to Thursday 8.00 a.m.-5.30 p.m. The examiner can also be reached on alternate Fridays from 8.00 a.m. to 4.30 p.m.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Boris Gorney can be reached on (571) 270-5626. The fax phone number for the organization where this application or processing is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from the either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL A KUDDUS/ Primary Examiner, Art Unit 2154
04/15/26
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