DETAILED ACTION
This non-final rejection is responsive to the Request for Continued Examination (RCE) filed June 30, 2026. Claims 1, 11, and 17 are currently amended. Claims 2-10, 12-16 and 18-20 are canceled. Claims 21-37 have been added. Claims 1, 11, 17, and 21-37 are pending in this application.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 30, 2026 has been entered.
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.
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Claims 1, 11, 17, 21, 25, 27, 31, and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 16 of U.S. Patent No. 12,216,789. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 9 and 16 of U.S. Patent No. 12,216,789 anticipate each limitation in claims 1, 11, 17, 21, 25, 27, 31, and 33 of the present application with the following differences in language. For example, claims 1 and 11 of the present application recite “eliminating a content item of the plurality of content items to the permissions-filtered results set” while claims 1 and 11 of U.S. Patent No. 12,216,789 recite “preventing the search engine from adding a content item of the plurality of content items to the permissions-filtered results set.” The examiner equates eliminating content from a result set to preventing content from being added to the result set. Further, the present application recites “a search engine associated with a repository”, while U.S. Patent No. 12,216,789 recites “a search engine associated with a content management system.” The repository is equated to a content management system.
Claims 1, 11, 17, 21, 22, 24, 25, 27, 28, 30, 31, 33, 34, and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4, 5, and 10 of U.S. Patent No. 11,544,400. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 4, 5, and 10 of U.S. Patent No. 11,544,400 anticipate each limitation in claims 1, 11, 17, 21, 22, 24, 25, 27, 28, 30, 31, 33, 34, and 36 of the present application with the following differences in language. For example, claims 1 and 11 of the present application recite “eliminating a content item of the plurality of content items to the permissions-filtered results set” while claims 4, 5, and 10 of U.S. Patent No. 11,544,400 recite “generating a permissions-filtered results set… excludes content items that fail to satisfy user permissions.” The examiner equates eliminating content from a result set to excluding content from the result set. Further, the present application recites “a search engine associated with a repository”, while U.S. Patent No. 11,544,400 recites “a search engine associated with a content management system.” The repository is equated to a content management system.
Claim Rejections - 35 USC § 103
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.
Claims 1, 11, 21-24, 26-30, and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Madany et al. (US 9,239,874 B1) (‘Madany’) in view of Haugen et al. (US 8,892,591 B1) (‘Haugen’).
With respect to claims 1 and 11, Madany teaches a computer-implemented method and a content management system comprising one or more processors configured to perform instructions comprising:
receiving a query input (col. 3 lines 55-61; col. 5 lines 8-10);
evaluating, in a search engine associated with a repository, user permissions based on a user identity and the query input for a search of content in the repository (col. 5 lines 13-17; col. 9 lines 20-31);
evaluating, by the search engine, the query input using a content index of a plurality of content items maintained in the repository (col. 4 lines 17-25);
producing a permissions-filtered suggested results set based on results of the user permissions, the query input, and the content index by eliminating a content item of the plurality of content items associated with the permissions-filtered suggested results set, in response to the search returning the content item and a determination that the user permissions exclude the content item as being accessible to the user identity (Madany teaches a search engine that evaluates user permissions and filters search results that a user/device is not permitted to access) (col. 9 lines 20-31); and
returning, by the search engine, the permissions-filtered suggested results set (Madany teaches returning and displaying search results that have been filtered based on user permissions.) (Fig. 6, col. 9 lines 25-31; col. 10 lines 31-50).
Even though entering a search term can be considered a partial query input, Madany does not explicitly recite a partial query input; generating a permissions-filtered suggested query inputs set based on the partial query input and the permissions-filtered suggested results set; and returning, by the search engine, the permissions-filtered suggested query inputs set.
Haugen teaches receiving a partial query input (i.e. baseball) (col. 11 lines 63-65);
generating a permissions-filtered suggested query inputs set (534 in Fig. 5, col. 12 lines 12-19) based on the partial query input (Fig. 5; col. 11 lines 63-65) and the permissions-filtered suggested results set (col. 7 lines 30-36 and col. 11 lines 11-15); and
returning, by the search engine, the permissions-filtered suggested query inputs set (Fig. 5; col. 12 lines 19-22).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have modified Madany to receive partial input as taught by Haugen to enable improved search results and presentation that considers alternative query suggestions and results (Haugen, Fig. 5, col. 12 lines 12-34). Further, the modification would have been obvious to a person having ordinary skill in the art because Madany teaches receiving search terms, which may obviously be any number of terms or characters, and thus incorporating a partial query such as that in Haugen represents a combination of known elements to achieve predictable results.
With respect to claims 21 and 27, Madany in view of Haugen teaches further comprising producing a plurality of permissions-filtered suggested results sets, each corresponding to one suggested query input of the permissions-filtered suggested query inputs set (Haugen, col. 12 lines 12-26).
With respect to claims 22 and 28, Madany in view of Haugen teaches further comprising applying a ranking to the permissions-filtered suggested query inputs set based on one or more criteria applied to each of the plurality of permissions-filtered suggested results sets (Haugen, col. 7 lines 47-62; col. 12 lines 25-33).
With respect to claims 23 and 29, Madany in view of Haugen teaches wherein the ranking is based on sizes of the corresponding permissions-filtered suggested results set (Haugen, col. 7 lines 47-62; col. 12 lines 25-33).
With respect to claims 24 and 30, Madany in view of Haugen teaches wherein the ranking is based on recentness of access of items of the corresponding permissions-filtered suggested results set (col. 7 lines 63-67; col. 11 line 57 – col. 12 line 4).
With respect to claims 26 and 32, Madany in view of Haugen teaches further comprising:
receiving, from a user, a selected suggested query input (Haugen, col. 12 lines 22-25);
providing, to the user, the permissions-filtered suggested results set corresponding to the selected suggested query input (Haugen, col. 12 lines 22-25); and
generating facets for the provided permissions-filtered suggested results set (Madany, Fig. 6, col. 10 lines 31-50; Haugen, col. 10 line 57 – col. 11 line 15).
Claims 25 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Madany et al. (US 9,239,874 B1) (‘Madany’) in view of Haugen et al. (US 8,892,591 B1) (‘Haugen’), as applied to claims 1 and 11 above, and further in view of Marantz et al. (US 2014/0280289 A1) ('Marantz').
With respect to claims 25 and 31, Madany in view of Haugen teaches a partial query input.
Madany in view of Haugen does not explicitly teach wherein receiving the partial query input includes detecting an indication that query inputting is not complete.
Marantz teaches receiving the partial query input includes detecting an indication that query inputting is not complete (paragraphs 54-56, 72 and 83).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have further modified Madany to detect the a query is not complete as taught by Marantz to enable enhanced searching that provides dynamic query suggestions to users as they type searches (Marantz, abstract, paragraphs 4 and 54). A person having ordinary skill in the art would have been motivated to make the modification because it would only entail modifying one type of query input for another type of query input.
Claim 17 and 33-37 are rejected under 35 U.S.C. 103 as being unpatentable over Madany et al. (US 9,239,874 B1) (‘Madany’) in view of Constandt et al. (US 2018/0157716 A1) ('Constandt'), and further in view of Haugen et al. (US 8,892,591 B1) (‘Haugen’).
With respect to claim 17, Madany teaches a computer program product comprising a non-transitory machine-readable medium storing instructions that, when executed by at least one programmable processor, cause the at least one programmable processor to perform instructions comprising:
receiving a query input (col. 3 lines 55-61; col. 5 lines 8-10);
evaluating the query input to search content managed by a repository (col. 5 lines 8-17), the content being searchable using a content index configured for indexing the content (col. 4 lines 21-25) and metadata associated with content items associated with the indexed content (col. 5 lines 28-31; col. 10 lines 1-5);
evaluating user permissions by searching a user permissions index implemented as an access control list index for one or more access control lists (col. 4 lines 17-25; col. 9 lines 20- 31);
producing a permissions-filtered suggested results set that includes at least a threshold number of content items that satisfy the query input and excludes content items that fail to satisfy user permissions identified in the access control list index (col. 9 lines 20-31); and
providing the permissions-filtered suggested results set (Madany teaches returning and displaying search results that have been filtered based on user permissions.) (Fig. 6, col. 9 lines 25-31; col. 10 lines 31-50).
Although Madany teaches a permissions-filtered results set and permissions-corrected summary statistics, and search indexes and searching based on content or metadata, Madany does not explicitly recite a metadata index.
Constandt teaches a metadata index configured for indexing metadata (paragraphs 149 and 152).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have modified the search results of Madany to incorporate a metadata index as taught by Constandt to enable a more efficient and flexible display of search results that is updated based on search results and user selections, thereby providing a user the best results having accurate information associated with the results.
Even though entering a search term can be considered a partial query input, Madany does not explicitly recite a partial query input; generating a permissions-filtered suggested query inputs set based on the partial query input and the permissions-filtered suggested results set; and providing the permissions-filtered suggested query inputs set.
Haugen teaches receiving a partial query input (i.e. baseball) (col. 11 lines 63-65);
generating a permissions-filtered suggested query inputs set (534 in Fig. 5, col. 12 lines 12-19) based on the partial query input (Fig. 5; col. 11 lines 63-65) and the permissions-filtered suggested results set (col. 7 lines 30-36 and col. 11 lines 11-15); and
providing the permissions-filtered suggested query inputs set (Fig. 5; col. 12 lines 19-22).
It would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the invention to have modified Madany to receive partial input as taught by Haugen to enable improved search results and presentation that considers alternative query suggestions and results (Haugen, Fig. 5, col. 12 lines 12-34). Further, the modification would have been obvious to a person having ordinary skill in the art because Madany teaches receiving search terms, which may obviously be any number of terms or characters, and thus incorporating a partial query such as that in Haugen represents a combination of known elements to achieve predictable results.
With respect to claim 33, Madany in view of Constandt and Haugen teaches further comprising producing a plurality of permissions-filtered suggested results sets, each corresponding to one suggested query input of the permissions-filtered suggested query inputs set (Haugen, col. 12 lines 12-26).
With respect to claim 34, Madany in view of Constandt and Haugen teaches further comprising applying a ranking to the permissions-filtered suggested query inputs set based on one or more criteria applied to each of the plurality of permissions-filtered suggested results sets (Haugen, col. 7 lines 47-62; col. 12 lines 25-33).
With respect to claim 35, Madany in view of Constandt and Haugen teaches wherein the ranking is based on sizes of the corresponding permissions-filtered suggested results set (Haugen, col. 7 lines 47-62; col. 12 lines 25-33).
With respect to claim 36, Madany in view of Constandt and Haugen teaches wherein the ranking is based on recentness of access of items of the corresponding permissions-filtered suggested results set (col. 7 lines 63-67; col. 11 line 57 – col. 12 line 4).
With respect to claim 37, Madany in view of Constandt and Haugen teaches further comprising:
receiving, from a user, a selected suggested query input (Haugen, col. 12 lines 22-25);
providing, to the user, the permissions-filtered suggested results set corresponding to the selected suggested query input (Haugen, col. 12 lines 22-25); and
generating facets for the provided permissions-filtered suggested results set (Madany, Fig. 6, col. 10 lines 31-50; Haugen, col. 10 line 57 – col. 11 line 15).
Response to Arguments
Applicant’s arguments with respect to claim 1, 11, 17, and 21-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA M WILLOUGHBY whose telephone number is (571)272-5599. The examiner can normally be reached 9-5:30, EST, M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ajay Bhatia can be reached at 571-272-3906. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA M WILLOUGHBY/Primary Examiner, Art Unit 2156 August 22, 2026
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