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 .
DETAILED ACTION
This is a reply to the application filed on 3/11/2025, in which, claims 1-20 are pending. Claims 1, 12, and 18 are independent.
When making claim amendments, the applicant is encouraged to consider the references in their entireties, including those portions that have not been cited by the examiner and their equivalents as they may most broadly and appropriately apply to any particular anticipated claim amendments.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Drawings
The drawings filed on 3/11/2025 are accepted.
Specification
The disclosure filed on 3/11/2025 is accepted.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. The claim(s) are directed to the abstract idea of collecting information and adding information (“receiving, from an external system via a computer network, metadata associated with one or more external content items stored on the external system, wherein the external content items themselves are not received; obtaining actions that are performable for the external content items; adding an indication of the actions that are performable for the external content items to the metadata”), storing information (“saving the metadata in a data store,”) and using the information (“wherein the metadata is used, at the internal environment, to perform the actions in relation to the external content items”). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); and Obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to collecting and providing known information and comparing new and stored information. Further, each and every step can be performed mentally and with pen and paper. The claims do not include limitations that are “significantly more” than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Note the use of generic and commonly used computer structure of computer network, system, data store, graphical user interface are simply generic computer elements (see Applicant’s disclosure paragraphs ¶19-¶20) and viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
2. Claims 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
5. Based upon consideration of all the relevant factors with respect to the claim as a whole, claims 18-20 are held to claim signal per se, and are therefore rejected as non-statutory subject matter under 35 U.S.C. 101. The rationale for this finding is explained below:
In claim 18, the “computer-readable storage medium” in accordance with Applicants' specification, may be an electromagnetic signal. The specification as originally filed sets forth the computer-readable storage medium such that to include transitory signals. The United States Patent and Trademark Office (USPTO) is obliged to give claims their broadest reasonable interpretation consistent with the specification during proceedings before the USPTO. See In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) (during patent examination the pending claims must be interpreted as broadly as their terms reasonably allow). The broadest reasonable interpretation of a claim drawn to the computer-readable storage medium (also called machine readable medium and other such variations) typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is absent an explicit definition or is silent. See MPEP 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2.
Double Patenting
1. 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 Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957); and In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970).
2. 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 12, and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 13, and 20 of US 10523677 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the limitations recited in the independent claims 1, 12, and 18 of the present application and are broader than limitations recited in independent claims 1, 13, and 20 of US 10523677 B2. Claims 2-11, 13-17, and 19-20 of the present application are not patentably distinct from respective claims 1-23 of US 10523677 B2 because the claims recite substantially the same features.
Claims 1, 12, and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of US 11265321 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the limitations recited in the independent claims 1, 12, and 18 of the present application and are broader than limitations recited in independent claim 1 of US 11265321 B2. Claims 2-11, 13-17, and 19-20 of the present application are not patentably distinct from respective claims 1-11 of US 11265321 B2 because the claims recite substantially the same features.
Claims 1, 12, and 18 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 7 of US 12250222 B2. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the limitations recited in the independent claims 1, 12, and 18 of the present application and are broader than limitations recited in independent claim 1 of US 12250222 B2. Claims 2-11, 13-17, and 19-20 of the present application are not patentably distinct from respective claims 1-10 of US 12250222 B2 because the claims recite substantially the same features.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, 8, 12, 15, 17, 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20070185914 A1 (hereinafter ‘Prahlad’).
As regards claim 1, Prahlad (US 20070185914 A1) discloses: A method, implemented by a computing device of an internal environment, for managing metadata associated with external content, the method comprising (Prahlad: Abstract): receiving, from an external system via a computer network, metadata associated with one or more external content items stored on the external system, wherein the external content items themselves are not received; (Prahlad: ¶39-¶40, ¶58, i.e., receiving the interaction data (i.e., metadata) and storing it in the metabase storage, wherein the metadata and content are stored separately)
obtaining actions that are performable for the external content items; (Prahlad: ¶39-¶43)
adding an indication of the actions that are performable for the external content items to the metadata; and (Prahlad: ¶39-¶43)
saving the metadata in a data store, wherein the metadata is used, at the internal environment, to perform the actions in relation to the external content items. (Prahlad: ¶39-¶44)
As regards claim 12, Prahlad (US 20070185914 A1) discloses: A computing device operating within an internal environment, the computing device comprising (Prahlad: Abstract): a processing unit; and memory; the processing unit executing computer instructions performing operations for managing metadata associated with external content, the operations comprising: obtaining, from an external system via a computer network, metadata associated with one or more external content items stored on the external system, without storing the external content items at the internal environment; (Prahlad: ¶39-¶40. ¶58, i.e., receiving the interaction data (i.e., metadata) and storing it in the metabase stroage, wherein the metadata and content are stored separately)
determining a plurality of actions that are performable for the external content items, comprising: receiving, via the metadata from the external system, indications of one or more external actions that are initiated within the internal environment and performed at the external system; and (Prahlad: ¶39-¶44, ¶146-¶155, i.e., admin interacting with metabase objects) determining one or more internal actions that are performable within the internal environment; (Prahlad: ¶39-¶43) adding the determined plurality of actions to the metadata; and (Prahlad: ¶39-¶43)
saving the metadata in a data store, wherein the metadata is used, at the internal environment, to perform the actions in relation to the external content items. (Prahlad: ¶39-¶44)
As regards claim 18, Prahlad (US 20070185914 A1) discloses: A computer-readable storage medium storing computer-executable instructions for causing a computing device to perform operations for managing metadata associated with external content, the operations comprising (Prahlad: Abstract): storing, at an internal environment, metadata describing external content items, wherein the metadata is received, at least in part, from an external system, and wherein the external content items are not stored at the internal environment; (Prahlad: ¶39-¶40, ¶58, i.e., receiving the interaction data (i.e., metadata) and storing it in the metabase stroage, wherein the metadata and content are stored separately)
receiving a request from a user of the internal environment to interact with an external content item represented in the stored metadata; (Prahlad: ¶39-¶44, ¶146-¶155, i.e., admin interacting with metabase objects)
retrieving, from the stored metadata, actions that are performable for the requested external content item; and (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155)
providing for display to the user in a graphical user interface, representations of the actions that are performable for the requested external content item, wherein the actions are performable, at least in part, within the internal environment. (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155)
As regards claim 2, Prahlad discloses the method of claim 1, wherein the metadata comprises, for each external content item: a unique identifier for the external content item; (Prahlad: ¶169-¶173) an indication of one or more actions that are performable for the external content item; (Prahlad: ¶169-¶173) and user permissions associated with the external content item. (Prahlad: ¶169-¶173)
As regards claim 3, Prahlad discloses the method of claim 1, wherein the obtaining actions that are performable for the external content items comprises, for each external content item: determining a content type of the external content item; (Prahlad: ¶90) obtaining one or more actions that are specific to the content type. (Prahlad: ¶145-¶147)
As regards claim 4, Prahlad discloses the method of claim 1, wherein the obtaining actions that are performable for the external content items comprises, for each external content item: receiving indications of one or more external actions that are performable for the external content item and that are specific to the external system; and (Prahlad: ¶20-¶21, ¶197-¶200) determining one or more internal actions that are performable for the external content within the internal environment. (Prahlad: ¶20-¶21, ¶197-¶200)
As regards claim 5, Prahlad discloses the method of claim 1, further comprising: determining user permissions for the external content items; and (Prahlad: ¶169-¶173) adding the user permissions to the metadata. (Prahlad: ¶169-¶173)
As regards claim 8, Prahlad discloses the method of claim 1, further comprising: receiving a request from a user to interact with an external content item; (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155) retrieving, from the stored metadata, the actions that are performable for the requested external content item; and (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155) providing for display in a graphical user interface, representations of the actions that are performable for the requested external content item. (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155)
As regards claim 15, Prahlad discloses the computing device of claim 12, wherein one or more of the plurality of actions are performable by an automated system of the internal environment. (Prahlad: ¶190)
As regards claim 17, Prahlad discloses the computing device of claim 12, wherein obtaining the metadata associated with the one or more external content items comprises: receiving the metadata from the external system without receiving the one or more external content items. (Prahlad: ¶39-¶40. ¶58).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 6, 7, 9, 10, 13, 14, 19, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prahlad in view of US 20120192055 A1 (hereinafter ‘Antebi’).
As regards claim 6, Prahlad discloses the method of claim 1. However, Prahlad does not but in analogous art, Antebi (US 20120192055 A1) teaches: receiving, form the external system, one or more access control lists (ACLs) associated with the external content items, wherein the ACLs reflect user permissions for users of the external system in relation to the external content items; (Antebi: ¶21-¶27, ¶62-¶69, i.e., multiple different types of document management systems provided by multiple different service providers (i.e., external) for different clients (i.e., internal), wherein the permissions list allows the clients to access and manipulate documents on the external systems) mapping the users of the external system to corresponding users of the internal environment; and (Antebi: ¶21-¶27, ¶62-¶69) adding the user permissions to the metadata using the mapped users of the internal environment. (Antebi: ¶21-¶27, ¶62-¶69)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
Claim 13 recites substantially the same features recited in claim 6 above and is therefore rejected based on the aforementioned rationale discussed in the rejection.
As regards claim 7, Prahlad discloses the method of claim 1. However, Prahlad does not but in analogous art, Antebi (US 20120192055 A1) teaches: wherein the external system is a remote content management system that is operated by a different organization from the internal environment, and wherein the external content items comprise electronic documents. (Antebi: ¶21-¶27, i.e., multiple different types of document management systems provided by multiple different service providers (i.e., external) for different clients (i.e., internal))
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
As regards claim 9, Prahlad discloses the method of claim 8. However, Prahlad does not but in analogous art, Antebi (US 20120192055 A1) teaches: further comprising: receiving, from the user, a selection of a displayed action; (Antebi: ¶21-¶27, ¶62-¶69) generating a service call for performing the selected action based on service call information obtained from the metadata for the requested external content item; and (Antebi: ¶21-¶27, ¶62-¶69) initiating performance of the action using the generated service call. (Antebi: ¶21-¶27, ¶62-¶69, i.e., the actions selected in the GUI performed on the external documents)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
Claim 19 recites substantially the same features recited in claim 9 above and is therefore rejected based on the aforementioned rationale discussed in the rejection.
As regards claim 10, Prahlad discloses the method of claim 1, wherein saving the metadata in a data store comprises creating a content object for each external content item, the content object comprising: a unique identifier for the external content item in the internal environment; (Prahlad: ¶169-¶173) a unique identifier for the external content item in the external system; (Prahlad: ¶169-¶173) indications of the actions that are performable for the external content item; (Prahlad: ¶169-¶173) . However, Prahlad does not but in analogous art Antebi teaches: for each of the actions, service call information for performing the action; and one or more access control lists (ACLs). (Antebi: ¶21-¶27, ¶62-¶69)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
As regards claim 14, Prahlad discloses the computing device of claim 12, the operations further comprising: receiving a request from a user to interact with an external content item; (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155) retrieving, from the stored metadata, the actions that are performable for the requested externa content item; (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155) providing for display in a graphical user interface, representations of the actions that are performable for the requested external content item; (Prahlad: Fig. 3B, ¶39-¶44, ¶146-¶155) However, Prahlad does not but in analogous art, Antebi teaches: receiving, from the user, a selection of a displayed action; (Antebi: ¶21-¶27, ¶62-¶69) generating a service call for performing the selected action based on service call information obtained from the metadata for the requested external content item; and (Antebi: ¶21-¶27, ¶62-¶69) initiating performance of the action using the generated service call. (Antebi: ¶21-¶27, ¶62-¶69, i.e., the actions selected in the GUI performed on the external documents)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
As regards claim 20, Prahlad et al combination teaches the computer-readable storage medium of claim 19, wherein the selected action is an external action, and wherein initiating performance of the external action comprises: communicating the service call to the external system. (Antebi: ¶21-¶27, ¶62-¶69, i.e., the actions selected in the GUI performed on the external documents)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Prahlad to include support for internal and external document management system provided by different service providers as taught by Antebi with the motivation to support multiple service providers document management (Antebi: ¶21-¶27)
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prahlad in view of US 20170142044 A1 (hereinafter ‘Ball’).
As regards claim 11, Prahlad discloses the method of claim 1. However, Prahlad does not but in analogous art, Ball (US 20170142044 A1) teaches: wherein the actions comprise: a like action indicating that a user likes the external content item; and a comment action indicating that a user has commented on the external content item. (Ball: Fig. 3A. ¶69, ¶125)
Before the time the invention was made it would have been obvious to one of ordinary skill in the art to modify Marcus to include action relating to comments and LIKE as taught by Ball with the motivation to perform qualitative analysis of the content based on user action (Ball: Abstract)
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prahlad in view of US 20090049084 A1 (hereinafter ‘Cho’).
As regards claim 16, Prahlad discloses the computing device of claim 12, wherein obtaining the metadata associated with the one or more external content items comprises: receiving the one or more external content items; generating the metadata from the received one or more external content items. (Prahlad: ¶39-¶40. ¶58).
However Marcus does not but in analogous art, Cho (US 20090049084 A1) teaches: deleting the received one or more external content items once the metadata is generated, wherein the one or more external content items are received temporarily but not stored at the internal environment. (Cho: Fig. 5, ¶59-¶64)
Before the time the invention was made it would have been obvious to one of ordinary skill in the art to modify Marcus to include generating metadata from the content and deleting and/or modifying the content as taught by Cho with the motivation to produce metadata related to the media objects (Cho: Abstract)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SYED A ZAIDI whose telephone number is (571)270-5995. The examiner can normally be reached Monday-Thursday: 5:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jeffrey Nickerson can be reached at (469) 295-9235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
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