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
The pending claims 1-9 are presented for examination.
Priority
Applicant's claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. As required by M.P.E.P. 201.14(c), acknowledgement is made of applicant's claim for priority based on application filed on October 26, 2022 (Japan 2022-171072).
Receipt is acknowledged of certified copies retrieved under 35 U.S.C. 119(a)-(d), which propriety documents have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/25/2025 has been considered by the examiner. Please see attached PTO-1449.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
As to claim 1, line 3, recites “configured to” performing functionality. It indicates intended use; Minton v. Nat ’l Ass ’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. Therefore intended use limitations are not required to be taught, see MPEP 2111.04.
As to claim 8, line 8, recites “able to” performing functionality. It indicates intended use; Minton v. Nat ’l Ass ’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003) “whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.” Examples of claim language, although not exhaustive, that may raise a question as to the limiting effect of the language in a claim are: (A) “adapted to” or “adapted for” clauses; (B) “wherein” clauses; and (C) “whereby” clauses. Therefore intended use limitations are not required to be taught, see MPEP 2111.04.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 9 are 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 pre-AIA the applicant regards as the invention.
Claim 8, lines 4 and 7, recite the limitation " the document". There is insufficient antecedent basis for this limitation in the claim.
Claim 9, line 5, recites the limitation " the program". There is insufficient antecedent basis for this limitation in the claim.
Appropriate clarification and correction is required.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Puzicha (U.S. Pat. Pub. 2019/0325031).
Referring to claim 1, Puzicha teaches a computer-implemented method for document processing, wherein the method comprises:
one or more processors (processor or multiple processor(s), see Puzicha, Para. 45) configured to:
display a first document on a document browsing screen (display on a graphical user interface, a list of predictively coded documents. The system can then receive an indication that a portion of the list of predictively coded documents is relevant to a user, see Puzicha, Para. 12. These selected or "pinned" documents are used as input to determine what other documents in a corpus of documents might be of interest to the user, see Puzicha, Para. 14),
retrieve, from a storage, a second document that is a document different from the first document and includes information corresponding to attribute information (obtaining a recommended set of documents from a corpus of documents based on the text categorization, see Puzicha, Para. 26) acquired from the first document (a step 110 of applying text categorization to the pinned portion of the list of predictively coded documents, see Puzicha, Para. 26),
display the second document as a candidate for a related document related to the first document (a step 114 of displaying a recommended set of documents to the user on the graphical user interface, see Puzicha, Para. 28), and
register the first document and the second document as related documents (a step 202 of classifying the recommended set of documents as positive or negative based on user feedback, see Puzicha, Para. 33).
Referring to claim 9, an information processing system comprising: a storage (a main memory 10, see Puzicha, Para. 45) storing a computer-readable program; and one or more processor (processor or multiple processor(s), see Puzicha, Para. 45) configured to execute the program, wherein by executing the program, one or more processors, which recites the corresponding limitations as set forth in claim 1 above; therefore, it is rejected under the same subject matter.
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 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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2, 3, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Puzicha (U.S. Pat. Pub. 2019/0325031) in view of Perram et al. (U.S. Pat. Pub. 2018/0075138).
As to claim 2, Puzicha does not explicitly teach the attribute information corresponds to each of a plurality of target items set in advance based on the first document.
However, Perram et al. teaches the attribute information corresponds to each of a plurality of target items set in advance based on the first document (extracting textual content from each electronic document in the set of electronic documents to identify classification criteria, see Perram et al., Para. 15, the utility performs an analysis of the identified document types from the clustering process and suggests appropriate metadata elements, see Perram et al., Para. 113, and, these selected or "pinned" documents are used as input to determine what other documents in a corpus of documents might be of interest to the user, see Puzicha, Para. 14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Puzicha, to have the attribute information corresponds to each of a plurality of target items set in advance based on the first document, as taught by Perram et al., to improving the accuracy of the classification system (Perram et al., Para. 107).
As to claim 3, Puzicha as modified teaches wherein the target items include at least one of a title of the first document, a name of a concerned party to the first document, and a contract date of the first document (The term "metadata" as used herein refers to the informational content of various documents or files and may include, for example, the name of a document or file, see Perram et al., Para. 92).
As to claim 5, Puzicha as modified teaches one or more processors are configured to acquire the attribute information corresponding to the target item from data of the first document at a time of storing the data of the first document in the storage (capturing source data for the set of electronic documents from the legacy content repository… extracting textual content from each electronic document in the set of electronic documents, see Perram et al., Para. 15. The electronic document have not been modified from capturing to extracting, so that the he information in the electronic document is the same as the information at the time of storing).
As to claim 6, Puzicha as modified teaches wherein one or more processors are configured to acquire the attribute information corresponding to the target item from the first document at a time of displaying the first document on the document browsing screen (display on a graphical user interface, a list of predictively coded documents. The system can then receive an indication that a portion of the list of predictively coded documents is relevant to a user, see Puzicha, Para. 12. These selected or "pinned" documents are used as input to determine what other documents in a corpus of documents might be of interest to the user, see Puzicha, Para. 14. Capturing source data for the set of electronic documents from the legacy content repository… extracting textual content from each electronic document in the set of electronic documents, see Perram et al., Para. 15. The reference Puzicha teaches displaying and selected document used as input, so that the extracted textual content corresponding to the target item from the first document at a time of displaying).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Puzicha (U.S. Pat. Pub. 2019/0325031) in view of SHARMA (U.S. Pat. Pub. 2024/0095445).
As to claim 4, Puzicha does not explicitly teach in a case of displaying a plurality of the second documents on the document browsing screen as candidates for the related document, the second documents are displayed in descending order of a degree of association that is calculated based on description content of the second document and the attribute information at a time of retrieving the second document from the storage.
SHARMA teaches in a case of displaying a plurality of the second documents on the document browsing screen (client computer having a graphical user interface or an Internet browser, see SHARMA, Para. 65) as candidates for the related document, the second documents are displayed in descending order of a degree of association (list those documents as search results in predefined order (e.g., ascending or descending order) by relevance, see SHARMA, Para. 37) that is calculated based on description content of the second document (given the search terms in the query, see SHARMA, Para. 37) and the attribute information at a time (Upload documents ( e.g., clinical documents) received at computing device 600 may be fed into document processing engine 622 to analyze and classify the documents and provide information and suggestions about the document to a user in real-time, see SHARMA, Para. 61) of retrieving the second document from the storage (calculate the cosine similarity between the query and each document within a corpus and generate a search results list, wherein relevant documents are sorted in ascending or descending order, see SHARMA, Para. 37).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Puzicha, to have in a case of displaying a plurality of the second documents on the document browsing screen as candidates for the related document, the second documents are displayed in descending order of a degree of association that is calculated based on description content of the second document and the attribute information at a time of retrieving the second document from the storage, as taught by SHARMA, to improve its accuracy and reduce the amount of training time required to complete NLP tasks (SHARMA, Para. 31).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Puzicha (U.S. Pat. Pub. 2019/0325031) in view of Finkelstein et al. (U.S. Pat. No. 9,342,601).
As to claim 7, Puzicha does not explicitly teach a first display region in which the second document as a candidate for the related document is displayed and a second display region in which a third document associated with the first document is displayed are separately provided on the document browsing screen.
However, Finkelstein et al. teaches a first display region in which the second document as a candidate for the related document is displayed and a second display region in which a third document associated with the first document is displayed are separately provided on the document browsing screen (indicate multiple documents that are currently displayed in different tabs, see Finkelstein et al., Col. 5, lines 44-45).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Puzicha, to have a first display region in which the second document as a candidate for the related document is displayed and a second display region in which a third document associated with the first document is displayed are separately provided on the document browsing screen, as taught by Finkelstein et al., to assist users in efficiently finding the information they seek (Finkelstein et al., Col. 2, line 58).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Puzicha (U.S. Pat. Pub. 2019/0325031) in view of Davis et al. (U.S. Pat. Pub. 2014/0181130).
As to claim 8, Puzicha does not explicitly teach display a list display screen on which extracted information of a single or a plurality of the documents stored in the storage is checked as a list; and create a list file including information of another document associated with the documents, the list file being able to be downloaded by a user.
However, Finkelstein et al. teaches display a list display screen (some of the relevant metadata information for the file or files currently selected may be displayed 404, see Davis et al., Para. 37) on which extracted information of a single or a plurality of the documents (extract differing amounts of metadata depending on the nature of the data file(s), see Davis et al., Para. 28) stored in the storage (storage task such that the uploaded file is stored upon the data storage system for future retrieval upon request, see Davis et al., Para. 27) is checked as a list (FIG. 7 shows an illustrative example of a UI for displaying metadata associated with data, see Davis et al., Para. 13); and create a list file including information of another document (The metadata engine may, in some embodiments, support the importation of extrinsic metadata information via upload of a separate file containing such extrinsic information…attendant files containing only such metadata information, see Davis et al., Para. 29) associated with the documents (a step 114 of displaying a recommended set of documents to the user on the graphical user interface, see Puzicha, Para. 28), the list file being able to be downloaded by a user (some or all of the metadata associated with one or more data files, or one or more data sets, may be packaged as a metadata file by, e.g., the metadata engine, and in some embodiments, provided for download upon request through an API, web service and/or the front-end interface, see Davis et al., Para. 29).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Puzicha, to have display a list display screen on which extracted information of a single or a plurality of the documents stored in the storage is checked as a list; and create a list file including information of another document associated with the documents, the list file being able to be downloaded by a user, as taught by Davis et al., to improve data archival and retrieval (Davis et al., Para. 23).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAU SHYA MENG whose telephone number is (571)270-1634. The examiner can normally be reached 9AM-5PM EST M-F.
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/JAU SHYA MENG/ Primary Examiner, Art Unit 2168