DETAILED ACTION
Introduction
This office action is in response to applicant’s claims filed 2/25/2025. Claim 1 is currently pending and have been examined. The claim to foreign priority is acknowledged.
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 .
Claim Interpretation
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “configured to” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/632,601 (reference application, hereinafter referred to as ‘601). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding ‘601 teaches, “An apparatus for drafting a patent document, comprising:
an element management unit configured to manage information of an element capable of being included in contents of a patent document (‘601 claim 1 cites “an element management unit configured to receive information of elements as specific objects that are capable of being included in contents of a patent document”);
an auto-complete list generation unit configured to generate a data set based on the information of the element managed by the element management unit and generate an auto-complete list based on results extracted from the data set using, as a search term, text input by a user (‘601, claim 1 “an auto-complete list generation unit configured to generate an auto-complete data set including element items generated based on the information of elements managed by the element management unit, and extract an element item corresponding to a search term from the auto-complete data set to generate an auto-complete list”); and
a text input component management unit configured to manage a text input component to which the user is able to input text, extract, as an auto-complete keyword, some of the text input to the text input component, transmit the extracted text to the auto-complete list generation unit, display, on a screen, the auto-complete list generated based on the auto-complete keyword, replace, when the user selects any one item included in the auto- complete list, the auto-complete keyword with the selected item and output the auto-complete keyword to the text input component (‘601 claim 1, “a text input component management unit configured to manage a text input component to which the user is able to input the contents of a patent document as text, extract, as an auto-complete keyword, some of the text constituting the patent document input to the text input component, transmit the extracted text as the search term to the auto-complete list generation unit, display, on a screen, the auto-complete list provided from the auto-complete list generation unit, replace, when the user selects any one element item included in the auto-complete list, the auto-complete keyword with the selected element item, and output the selected element item to the text input component.”)
‘601 further teaches contents in a patent document described as text, and constitute an invention, from a user through the input and output interface and manage the information of elements, and wherein the text input component management unit adds an item to be replaced as one auto-complete block in the text input component: and wherein the text input component management unit sets the auto-complete block generated from each element item to have the same unique identification value.
19/062,793
18/632,601
an element management unit configured to manage information of an element capable of being included in contents of a patent document
an element management unit configured to receive information of elements as specific objects that are capable of being included in contents of a patent document
an auto-complete list generation unit configured to generate a data set based on the information of the element managed by the element management unit and generate an auto-complete list based on results extracted from the data set using, as a search term, text input by a user
an auto-complete list generation unit configured to generate an auto-complete data set including element items generated based on the information of elements managed by the element management unit, and extract an element item corresponding to a search term from the auto-complete data set to generate an auto-complete list”
a text input component management unit configured to manage a text input component to which the user is able to input text, extract, as an auto-complete keyword, some of the text input to the text input component, transmit the extracted text to the auto-complete list generation unit, display, on a screen, the auto-complete list generated based on the auto-complete keyword, replace, when the user selects any one item included in the auto- complete list, the auto-complete keyword with the selected item and output the auto-complete keyword to the text input component
a text input component management unit configured to manage a text input component to which the user is able to input the contents of a patent document as text, extract, as an auto-complete keyword, some of the text constituting the patent document input to the text input component, transmit the extracted text as the search term to the auto-complete list generation unit, display, on a screen, the auto-complete list provided from the auto-complete list generation unit, replace, when the user selects any one element item included in the auto-complete list, the auto-complete keyword with the selected element item, and output the selected element item to the text input component
However, where an omission on a device or apparatus is no more than the “Omission of an Element and Its Function, where the Function of the Element Is Not Desired or Required” the claim is unpatentable under 35 U.S.C. 103(a). Ex parte Wu , 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989). Accordingly, Applicant claims a combination that only unites old elements with no change in the respective functions of those old elements, and the omission one of those elements yields predictable results; absent evidence that the modifications necessary to effect the combination of elements is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a). Accordingly, since the applicant[s] have submitted no persuasive evidence that the omission of the above element is uniquely challenging or difficult for one of ordinary skill in the art, the claim is unpatentable as obvious under 35 U.S.C. 103(a) because it is no more than the predictable use of prior art elements according to their established functions resulting the same resultant function.
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art, in view of the teachings of ‘601 to omit the additional element(s) functions as taught by ‘601 as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be the continued replacement of an auto-complete keyword with and element item included in the auto-complete list, (ibid-see claim 1, corresponding limitation).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Lepeltier (US 2017/0075877) in view of Lipsey (US 2011/0035364).
As per claim 1, Lepeltier teaches an apparatus for drafting a patent document, comprising:
[an element management unit configured to manage] information of an element capable of being included in contents of a patent document (paragraph [0102, 0103, 0104, 0107, 0160, 0098, 0036]-his managed lexicon, and database of created texts, such as his published texts, and patent database of text items, received, created by a user, and developing a library of replacement candidates, see his “any numeral identifying an element”, thus elements and corresponding identification/numeral, facilitating description, the description as the words describing the patent application for an invention);
an auto-complete list generation unit configured to generate a data set based on the information of the element managed by the element management unit and generate an auto-complete list based on results extracted from the data set using, as a search term, text input by a user (ibid-Figs 21-23, paragraph [0160]-as his auto-completion data set, based on database of created texts, as described above); and
a text input component management unit configured to manage a text input component to which the user is able to input text (ibid-Figs. 21-23, paragraph [0160]- including a text input component, and user entered text as contents of a patent document), extract, as an auto-complete keyword, some of the text input to the text input component (ibid-his user input, as comprising an auto-complete keyword, extracted and used to query the created database of elements), transmit the extracted text to the auto-complete list generation unit, display, on a screen, the auto-complete list generated based on the auto-complete keyword, replace, when the user selects any one item included in the auto- complete list, the auto-complete keyword with the selected item and output the auto-complete keyword to the text input component (ibid, Figs. 21-23, paragraph [0160]-his search terms provided to the displayed auto-completion list, his user “select” of any one of the displayed auto-completion candidates from the list, and the replacement of the auto-complete keyword, in the text input space, with the selected element).
Lepeltier does not explicitly teach that which Lipsey teaches, an element management unit configured to manage information of an element capable of being included in contents of a patent document (Fig. 1 items 106, 018, 114, 116, 118, 120, 122, paragraph [0002, 0033, 0044, 0048, 0062-0064, 0090]-his database of elements, corresponding information of elements, as specific objects that are capable of being included in a patent document as drafted, his explicit illustrated elements, and corresponding key terms and numerical identifier, which are indexed and searched for, via the created index list, and used for auto-completion).
Thus, it would have been obvious to one of ordinary skill in the linguistics art, before the effective filing date of the invention, as all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods (computer implemented techniques and algorithms combining processes and steps in natural language processing), in view of the teachings of Lepeltier and Lipsey to combine the prior art element of drafting a patent document using an auto-completion list, based on elements and information of elements used in a description as taught by Lepeltier with an element management unit that receives information of elements as specific objects, as taught by Lipsey as each element performs the same function as it does separately, as the combination would yield predictable results, KSR International Co. v. Teleflex Inc., 550 US. -- 82 USPQ2nd 1385 (2007), wherein the predictable result would be auto-completing based on searching for key terms, from elements, and searching using the element root portion, for an auto-completion element that can replace the key term, as entered into the text input space (ibid-Lipsey, paragraphs [0062-0064]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAMONT M SPOONER whose telephone number is (571)272-7613. The examiner can normally be reached 8:00 AM -5:00 PM.
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/LAMONT M SPOONER/ Primary Examiner, Art Unit 2657
7/22/2026
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