DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This action is response to communication: response to amendments/arguments filed on 08/18/2026.
Claims 1-20 are currently pending in this application. Claims 2-20 are new.
The IDS filed on 08/18/2026 has been received.
Response to Arguments
Applicant’s arguments concerning the double patenting rejections have been fully considered. The prior double patenting rejections have been withdrawn in response to applicant’s amendments.
Applicant’s arguments concerning the art rejections of the independent claims have been fully considered but are not persuasive. Applicants broadly state that the amended claims overcome the limitations of the Shapiro and Ford references. However, such limitations are obvious over the references. See amended rejection below to address the limitations of the independent claims. New references are added to address the dependent claims.
Double Patenting
The prior double patenting rejections have been withdrawn in response to applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 19 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 19 is dependent on claim 18, and includes all the limitations of claim 18, almost verbatim. It is unclear how the repeated limitations of claim 19 further limit the claimed invention.
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.
Claim(s) 1, 3, 14-16, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ford et al. US Patent Application Publication 2017/0041296 (Ford), in view of Shapiro US Patent Application Publication 2014/0019761 (Shapiro).
As per claim 1, Ford teaches a computer-implemented method for securely acquiring an electronic-based signature in a networked computing environment, the computer-implemented method being performed by a computerized content management system CMS hosting an object, the computer implemented method comprising: the computerized CMS: receiving, from an electronic signature system ESS utilized by a signaturoy, in situ data related to a prospective electronic signing of the shared content object by the signatory (paragraph 131 with receiving data including authorized/unauthorized users viewing the document for signing;); determining a security vulnerability or risk based at least in part on the received in situ data (paragraph 131 with determining number of people viewing, unauthorized signer, etc); generating a remediation instruction based at least in part on the security vulnerability or risk and communicating the remediation instruction to the ESS, wherein the remediation instruction is executed by the ESS to securely acquire the electronic based signature (paragraph 131-133; if computer detects multiple people viewing, instruction to obfuscate parts of screen;).
Although Ford teaches an object to be signed, Ford does not explicitly teach that the object is a shared content object. However, it would have been obvious, if not inherent, that the document is a “shared” object, as a signed object is utilized by a party other than the signer. However, for a more explicit teaching on a shared object, see Shapiro (abstract, Figure 2, and throughout with e-signature platform with multiple clients). Shapiro further teaches the computerized content management system hosting the shared object and securely acquiring the electronic based signature (abstract, Figure 2, and throughout)
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of Ford with Shapiro. One of ordinary skill in the art would have been motivated to perform such an addition to provide a system for self-contained electronic signatures (paragraph 21).
As per claim 3, the Ford combination teaches determining the security vulnerability or risk comprising the computerized CMS comparing the in situ network data and network policies maintained by the computerized CMS (Ford paragraphs 131-132 wherein the data is compared to the rules/conditions set in the user profile).
As per claim 14, the Ford combination teaches wherein the computerized CMS determines multiple security vulnerabilities or risk based at least in part on processing the received in situ data and generates multiple remediation instructions based at least in part the multiple determined security vulnerabilities, and wherein the multipole remediation instructions are communicated to and executed by the ESS prior to allowing the signatory to electronically sign the shared content object (Ford paragraph 131 with user having multipole conditions, including multipole people viewing and authorization matching).
As per claim 15, the Ford combination teaches further comprising configuring the computerized CMS, wherein the computerized CMS hosts and exposes at least one shared content object of a plurality of content objects to a plurality of collaborators including the signatory, and collaboration comprises at least one collaborator modifying the shared content object or metadata of the shared content object in a collaboration event hosted on the computerized CMS (see throughout Shapiro; for example, see abstract, Figure 2, and throughout with multiple parties signing data).
Claim 16 is rejected using the same basis of arguments used to reject claim 1 above.
Claim 20 is rejected using the same basis of arguments used to reject claim 1 above.
Claim(s) 2, 7, 9, 12, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over the Ford combination as applied above, and further in view of Kumar et al. US patent Application Publication 2016/0132693 (Kumar).
As per claim 2, Ford as modified does not explicitly teach wherein the in situ data received by the CMS comprising in situ network data at a current time and location of the prospective electronic signing of the shared content object. However, utilizing such information in performing electronic signatures is well known in the art. For example, see Kumar (paragraph 29wherein authentication can be performed before electronic signature created; see paragraph 30 wherein authetnicaiton can include timestamp and geographical location).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings for the Ford combination with Kumar. One of ordinary skill in the art would have been motivated to perform such an addition to provide improved document processing in regards to electronic signatures (paragraph 10 of Kumar).
As per claim 7, the Ford combination teaches the in situ data received by the computerized CMS further comprising in situ signatory authentication data at a current time a location of the prospective electronic signing of the shared content object (Kumar paragraph 29 wherein authentication data may include timestamp and geographical location).
As per claim 9, the Ford combination does not explicitly teach wherein the in situ data received by the computerized CMS comprising in situ signatory authentication data at a current time and location of the prospeciteve electronic signing of the shared content object. However, this would have been obvious. For example, see Kumar (paragraph 29 wherein authentication data may include timestamp and geographical location).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings for the Ford combination with Kumar. One of ordinary skill in the art would have been motivated to perform such an addition to provide improved document processing in regards to electronic signatures (paragraph 10 of Kumar).
As per claim 12, it would have been obvious over the Ford combination wherein the computerized CMS generates a remediation instruction for when the in situ data indicates that the signatory is logged into at least one of the computerized CMS and the ESS using an identity that is different form an identity of the signaturoy in an envelope data structure or message for the prospective electronic signing (Ford paragraph 131 with verifying identity of signer via biometric; if match is not made,, e-signing cannot proceed).
Claim 17 is rejected using the same basis of arguments used to reject claim 2 above.
Claim 18 is rejected using the same basis of arguments used to reject claim 7 above.
Claim 19, as best understood by the Examiner, is rejected using the same basis of arguments used to reject claim 7 above.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over the Ford combination as applied above, and further in view of Gula et al. US Patent Application Publication 2014/0007241 (Gula).
As per claim 4, the Ford combination does not explicitly teach wherein determining the security vulnerability or risk comprising the computerized CMS determining that a network identified by the in situ network data is on a blacklist or not permitted to be utilized. However, determining risks associated with a particular network that is not to be utilized is well known in the art. For example, see Gula (paragraph 13 with network monitoring based on vulnerabilities; see also paragraph 39 with monitor/remediate/manage vulnerabilities including those related to attacker network addresses.
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Gula. One of ordinary skill in the art would have been motivated to perform such an addition to increase security by leveraging active and passive vulnerability discovery to identify weak points in the network (Gula paragraph 8).
As per claim 5, the Ford combination does not explicitly teach wherein determining the security vulnerability or risk comprising the computerized CMS determining that a network path change has occurred. However, determining risks associated with network path change is well known in the art. For example, see Gula (paragraph 13 with vulnerabilities including malicious users leapfrogging into network via one or more hops).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Gula. One of ordinary skill in the art would have been motivated to perform such an addition to increase security by leveraging active and passive vulnerability discovery to identify weak points in the network (Gula paragraph 8).
As per claim 6, the Ford combination does not explicitly teach wherein determining the security vulnerability or risk comprsiign the computerized CMS determining that a network path identified by the in situ network data includes at least one network location hop involving a pre-determined suspicious locaiton. However, determining risks associated with network path that includes a network location hop from a suspicious location is known in the art. For example, see Gula (paragraph 13 with vulnerabilities including malicious users leapfrogging into network via one or more hops; see also paragraph 39 with known attacker network addresses).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Gula. One of ordinary skill in the art would have been motivated to perform such an addition to increase security by leveraging active and passive vulnerability discovery to identify weak points in the network (Gula paragraph 8).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over the Ford combination as applied above, and further in view of Watson et al. US Patent Application Publication 2018/0089403 (Watson)
As per claim 8, the Ford combination does not explicitly teach wherein the computerized CMS determines the security vulnerability or risk based at least in part on a strength of the in situ authentication data relative to the in situ network data. However, determining risks based at least on part of the strength of authentication data relative to operations is well known in the art. For example, see Watson (paragraphs 72-75 with determining risk based on authentication mechanism for the operation being performed).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Watson. One of ordinary skill in the art would have been motivated to perform such an addition to create more security by providing cross-multifactor authentication (paragraph 6 of Watson).
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over the Ford combination as applied above, and further in view of Rothschild et al. US Patent Application Publication 2022/0239699 (Rothschild).
As per claim 10, the Ford combination does not explictilyt each determining the security vulnerability or risk comprising the computerized CMS determining that an access device utilized by the signatory has not been authorized or was de-authorized by the computerized CMS. However, relating a vulnerability/risk to an access device that has not been authorized is well known in the art. For example, see Rothschild (paragraph 25 with insecure/unknown devices present a security risk;
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Rothschild. One of ordinary skill in the art would have been motivated to perform such an addition to create more security (paragraphs 7-9 of Rothschild).
As per claim 11, the Ford combination teaches determining that the access device has not been authorized; and generating a remediation instruction to execute an authentication protocol using a mfa involving a device known by the computerized CMS (obvious over Rothschild; see paragraphs 25-27; see paragraph 30 wherein MFA may be used; see paragraph 41 with MFA utilizing a known device such as a user’s phone).
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over the Ford combination as applied above, in view of Mutter US Patent Application Publication 2019/0303921 (Mutter), and further in view of Rothschild et al. US Patent Application Publication 2022/0239699 (Rothschild)
As per claim 13, the Ford combination does not explicitly teach wherein the signatory has multiple accounts with respective multipe email address at the computerized CMS. However, a user having multiple accounts with multiple email addresses is well known in the art. For example, see Mutter (paragraph 90).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Mutter. One of ordinary skill in the art would have been motivated to perform such an addition to provide secure and simple way to transfer assets (paragarph3 of Mutter).
Although the Ford combination teaches authentication and confirming a user’s identity (see throughout Ford), the combination does not explicitly teach confirming identity using MFA. Utilizing MFA is well known in the art. For example, see Rothschild (paragraphs 25-27; see paragraph 30 wherein MFA may be used; see paragraph 41 with MFA utilizing a known device such as a user’s phone).
At the time the invention was filed, it would have been obvious to one of ordinary skill in the art to combine the teachings of the Ford combination with Rothschild. One of ordinary skill in the art would have been motivated to perform such an addition to create more security (paragraphs 7-9 of Rothschild).
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 JASON KAI YIN GEE whose telephone number is (571)272-6431. The examiner can normally be reached on Monda-Friday 8:30-5:00 PST Pacific.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Farid Homayounmehr can be reached on (571) 272-3739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON K GEE/Primary Examiner, Art Unit 2495
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