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 .
The instant application having Application No. 19/025,852 filed on 06/18/2013 is presented for examination by the Examiner. Claims 1-18 are currently pending in the present application.
Drawings
The drawings filed 01/16/2025 are accepted for examination purposes.
Information Disclosure Statement
As required by M.P.E.P. 609, the Applicant's submission of the Information Disclosure Statement dated 05/01/2025 is acknowledged by the Examiner and the cited references have been considered in the examination of the claims now pending.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-16 of prior U.S. Patent No. 12,259,893 B2. This is a statutory double patenting rejection.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per claim 1, the claim recites “A system, comprising:
a computing device comprising a processor and memory;
an input module to interact with the processor and memory of the computing device to receive a plurality of digital pages having machine-encoded sheet name notations thereon, including primary sheet name notations and reference sheet name notation, wherein each reference sheet name notation refers to a primary sheet name notation presumably on another of the plurality of digital pages; and
an error identification module to identify at least one reference sheet name notation that refers to a primary sheet name notation that is not in the electronic index as an erroneous reference sheet name notation; and
a reporting module to generate an electronic report that identifies each primary sheet name notation and each reference sheet name notation within the plurality of digital pages, wherein at least one of the reference sheet name notations and the primary sheet name notations are non-sequentially located within the plurality of digital pages”.
Step 1 : Statutory Category
Claim 1 discloses a system which is a machine within the meaning of the section.
Step 2A - Prong One: Judicial Exception Recited
The claim recites the limitations “identify” and “generate” which specifically recite “identify at least one reference sheet name notation……………..an erroneous reference sheet name notation” and “generate an electronic report that identifies each primary sheet name notation…………...the plurality of digital pages.”. These limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting “processor”, nothing in the claim element precludes the steps from practically being performed in a human mind or with the aid of pen or paper. For example, “identify” in the context of this claim encompass a user mentally, and with the aid of pen and paper looking at the data items and examine the list to identify the relevant ones.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A - Prong Two: Integrated into a Practical Application
The claim recites the additional elements “receive a plurality of digital pages having machine-encoded sheet name……………the plurality of digital pages”. The judicial exception is not integrated into a practical application. In particular, the additional steps: the “receiving” step mounts to data gathering which is considered to be insignificant extra-solution activity (see MPEP 2106.05(g)). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, thus fail to integrate the abstract idea into a practical application. See MPEP 2106.05(g).
Step 2B: Claim provides an Inventive Concept
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The insignificant extra-solution activities identified above, which include the data-gathering and the steps of “generate an electronic report……….” are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP 2106.05(d)(II)). For these reasons, there is no inventive concept in the claim, and thus it is ineligible.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using one or more processors to detect the receiving a plurality of digital pages…….…” steps amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, claim 1 is directed to an abstract idea.
As per claim 2, the claim recites “further comprising: an indexing module to generate a digitally accessible electronic index in a non-transitory computer readable medium that: associates each identified primary sheet name notation with one of the plurality of digital pages, and associates each reference sheet name notation with the primary sheet name notation on which it is identified, wherein the reporting module is further configured to generate a report of the electronic index that identifies each reference sheet name notation that refers to a primary sheet name notation that is not in the electronic index”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 3, the claim recites “ further comprising an error identification subsystem to identify each reference sheet name notation that refers to a primary sheet name notation that is not in the electronic index as an error, and wherein the reporting module is further configured to identify each error within the electronic report”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 4, the claim recites “wherein the electronic report includes at least one primary sheet name notation referenced by at least two reference sheet name notations on different digital pages”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 5, the claim recites “wherein the generated electronic index includes a first primary sheet name notation on a first digital page referred to by (1) a first reference sheet name notation on a second digital page and (2) a second reference sheet name notation on a third digital page, and wherein the system further comprises a backlink generation module to create a backlink for the first primary sheet name within the electronic report with hyperlinks to each of the first reference sheet name notation and the second reference sheet name notation”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 6, the claim recites “wherein the first digital page, the second digital page, and the third digital page are interspersed and non-sequential within the plurality of digital pages”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 7, the claim recites “wherein the electronic report further comprises backlink information associated with at least one of the primary sheet name notations, wherein the backlink information associated with each respective primary sheet name notation comprises a report of plurality of digital pages, listed by primary sheet name notations, that include reference sheet name notations that reference each respective backlinked primary sheet name notation”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 8, the claim recites “wherein the selectively viewable backlink information is viewable by a user in response to a mouse-over on the backlinked primary sheet name notation, such that by mousing-over on the backlinked primary sheet name notation, the user is able to view a list of primary sheet name notations of digital pages that include reference sheet name notations thereon that refer to the backlinked primary sheet name notation within the report”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 9, the claim recites “wherein one of the plurality of digital pages comprises an index sheet of primary sheet names within the plurality of digital pages, and wherein the reporting module is further configured to generate a report of the primary sheet names identified within the plurality of digital pages that are not listed within the index sheet”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 10 the claim recites “A non-transitory computer readable storage medium storing instructions that, when executed by a processor, are configured to cause the processor to:
receive a plurality of digital pages having machine-encoded text, wherein the machine-encoded text of the plurality of digital pages includes a plurality of notations, including primary sheet name notations and reference sheet name notations, wherein each reference sheet name notation refers to a primary sheet name notation on another of the plurality of digital pages; and
generating a digitally accessible electronic index in a non-transitory computer-readable medium that associates each identified primary sheet name notation with one of the plurality of digital pages, and associates each reference sheet name notation with (i) the digital page on which it is located and (ii) the primary sheet name notation to which it refers,
wherein the electronic index includes at least one primary sheet name notation referred to by multiple reference sheet name notations, and wherein the electronic index identifies each reference sheet name notation that refers to a primary sheet name notation that is not in the electronic index”.
Step 1: Statutory Category
Claim 10 discloses a CRM which is a manufacture within the meaning of the section.
Claim 10 recites the same limitations as claim 1 and therefore is rejected under the same premise as claim 1.
As per claim 11, the claim recites “wherein the digital pages comprise construction document pages”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 12 the claim recites “A system, comprising:
an input subsystem to interact to receive a plurality of non-sequential digital pages having sheet name notations thereon;
a categorization subsystem:
categorize each sheet name notation that refers to a primary sheet name notation purported to be on another of the plurality of digital pages as a reference sheet name notation, and
categorize each sheet name notation that is not categorized as a reference sheet name notation as a primary sheet name notation;
an indexing subsystem to generate a digitally accessible electronic index that:
associates each primary sheet name notation with one of the plurality of
digital pages, and
associates each reference sheet name notation with
(i) the digital page on which it is located, and
(i) the primary sheet name notation to which it refers;
an error identification subsystem to identify at least one reference sheet name
notation that refers to a primary sheet name notation that is not in the electronic index
as an erroneous reference sheet name notation; and
a reporting subsystem to generate a report of the electronic index that identifies
each erroneous reference sheet name notation and the digital page on which it is
located, wherein the reporting subsystem is configured to identify the digital page on
which each erroneous reference sheet name notation is located”.
Step 1: Statutory Category
Claim 12 discloses a system which is a machine within the meaning of the section.
Claim 12 recites the same limitations as claim 1 and therefore is rejected under the same premise as claim 1.
As per claim 13, the claim recites “wherein the reporting subsystem is configured to identify the digital page on which each erroneous reference sheet name notation is located by providing the primary sheet name notation of the digital page on which the erroneous reference sheet name notation is located”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 14, the claim is rejected under the same premise as claim 5.
As per claim 15, the claim is rejected under the same premise as claim 6.
As per claim 16, the claim is rejected under the same premise as claim 7.
As per claim 17, the claim is rejected under the same premise as claim 8.
As per claim 18, the claim is rejected under the same premise as claim 9.
Allowable Subject Matter
8. Claims 1-18 would be allowable if rewritten or amended to overcome the rejections as set forth in this Office action.
Conclusion
9. The prior art made of record, listed on PTO 892 provided to Applicant is considered to have relevancy to the claimed invention. Applicant should review each identified reference carefully before responding to this office action to properly advance the case in light of the prior art.
Contact Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM T NGUYEN whose telephone number is (571)270-1757. The examiner can normally be reached on Mon-Thurs 6-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kavita Stanley can be reached on (571)272-8352. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Feb. 19, 2026
/KIM T NGUYEN/Primary Examiner, Art Unit 2153