DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Claims 1-20 are pending.
Drawings
3. The drawings have been reviewed and are accepted as being in compliance with the provisions of 37 CFR 1.121.
Claim Rejections - 35 USC § 112
4. 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.
5. Claims 9-11 and 16-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 9-11, the phrase "to be" renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of he claimed invention. See MPEP § 2173.05(d).
6. With regard to claims 16-20, claim limitations “intake tool configured to”, “splitting tool configured to”, “a docketing system”, “an electronic communication system for”, “docket system configured”, “an auxiliary annotation system configured to apply”. found in claims 16-20 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The instant specification does not disclose structure for these elements and drawings depict them as black rectangles.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Interpretation
7. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
8. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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: “intake tool configured to”, “splitting tool configured to” and “a docketing system” in Claim 16; claim 17, also discloses “an electronic communication system for”, claim 18 recites “intake tool”; claim 19 recites “docket system configured in claim 20, also discloses “an auxiliary annotation system configured to apply”.
Absence of the term “means” with functional language establishes a rebuttable presumption that applicant does not intend to invoke section 112(f).
This presumption can be rebutted by using a generic placeholder coupled to a
function. For example, the word “mechanism,” “component,” or “unit” are often
used in place of “means.” When coupled to a function and having no specific
structural meaning, such use would invoke section 112(f).
For claims that do not include section 112(f) limitations, typically under the BRI, the claim language is construed in accordance with its plain meaning in light of the specification as it would be understood by one of ordinary skill in the art. The specification is used only to interpret the meaning of the claim terms in the same manner as they would be interpreted by one of ordinary skill in the art. The specification is not used to implicitly add limitations that do not have express basis in the claim. For example, a claim would not be limited to the preferred embodiment unless the limitations of the preferred embodiment are positively recited in the claim.
The specification does not disclose sufficient structure to perform the claim limitations. Specification paragraphs [0042-0043], recites intake tool to analyze, splitting tool to receive.
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.
Claim Rejections - 35 USC § 101
9. 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.
10. Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: The claim 1 recites e(s) a series of steps method therefore is a process and a Claim 16 recites “system” therefore the claim is a machine.
Step 2A Prong One: Claims 1, 14, and 16 recite the limitations "analyzing” and specifically reciting " analyzing each document associated with the file, and identifying omnibus documents within the plurality of electronic communications, wherein each identified omnibus document contains more than one item, each item requiring docketing individually" and " identifying each of the multiple items to be docketed” These limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components.
That is, other than reciting an "electronic communication", nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper.
The context of this claim encompasses a user doing the determination of receiving document and sort them. It can be viewed as a mental process, as a judgment step of a mental process.
See Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2).
Step 2A Prong Two: The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements “receiving" and specifically reciting " receiving an electronic communication “splitting the document into individual items to be docketed” and “and sending each of the individual items to a docketing system for docketing.” The limitations amount to a data gathering step and a mere generic transmission and presentation of collected and analyzed data which is considered to be insignificant extra solution activity MPEP 2106. 05 (d) (II) (i) Receiving or transmitting data over a network using the Internet to gather data, buySAFE, Inc. V. Googler Inc, 765 F.3d 1350r 1355r 112 USPQ2d 1093r 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations “splitting” and “displaying” is recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (see MPEP 2106.05(d)(II)(iv) Storing and retrieving information in memory, Versata Dev. Group Inc.
As per Claim 2, determining one or more docket tasks associated with each of the multiple items to be docketed. It can be viewed as a mental process, as a judgment step of a mental process.
As per Claim 3, determining one or more deadlines associated with each of the multiple items to be docketed. The deadlines in a docket information can be performed mentally.
As per Claim 4, labeling each of the individual items. The labeling can be written with pen and paper.
As per Claim 5, sorting each of the individual items into one or more categories, “sorting” could be performed manually.
As per Claim 6, applying structured text to each of the individual items, denoting categories. It is not different from categorizing, can be written with pen and paper.
As per Claim 7, comprising directing each of the individual items to one or more locations. It can be viewed as a mental process, as a judgment step of a mental process.
As per Claim 8, further comprising flagging at least one of the more than one items for further review. It can be viewed as a mental process, as a judgment step of a mental process.
As per Claim 9, identifying the document containing multiple items to be docketed. It can be viewed as a mental process, as a judgment step of a mental process.
As per Claim 10, identifying the document containing multiple items comprises using an auxiliary annotation system and applying one or more annotations to the document; nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper
As per Claim 11, identifying the document containing multiple items comprises optical character recognition. It can be viewed as a mental process, as a judgment step of a mental process, reading and recognizing text.
As per Claim 12, identifying each of the multiple items to be docketed comprise analyzing the document containing multiple items with optical character recognition. It can be viewed as a mental process, as a judgment step of a mental process.
As per Claim 13, optical character recognition is used to identify one or more codes, phrases, templates, or other objects indicating different items in the omnibus file. It can be viewed as a mental process, as a judgment step of a mental process. Identifying different items in a file. nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper.
As per Claim 14, identifying each of the multiple items to be docketed comprise analyzing the document containing multiple items using an auxiliary annotation system. nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper.
As per Claim 15 applying one or more annotations to the document indicating individual items therein. “annotations” nothing in the claim element precludes the step from practically being performed in a human mind or with the aid of pen and paper.
As per Claims 16-20, being the system claims corresponding to the system claims 1-15 respectively and rejected under the same reason set forth in connection of the rejections of Claims 1-15.
Double Patenting
11. 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. See 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of US 12326907.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application substantially recite the limitations of claims 1- 20 of the cited US 12326907 for docketing and comparing files. The claim merely omits certain bolded limitations as shown in comparison table below, and replace them with .
Claim 1-15 (instant application)
Claim 1-15 (US 12326907)
1. A method comprising: receiving a plurality of electronic communications containing documents associated with a file;
analyzing each document associated with the file, and identifying omnibus documents within the plurality of electronic communications,
wherein each identified omnibus document contains more than one item, each item requiring docketing individually;
applying one or more annotations at identified locations within the omnibus document indicating an end of one item and a start of another item;
identifying the one or more annotations; displaying a user interface for interaction with a user, the user interface containing the identified omnibus documents and identified one or more annotations within the identified omnibus documents; receiving a selection of an omnibus document from the user interface for splitting;
splitting the selected omnibus document into individual items based on the identified locations within the selected omnibus document; and sending each of the more than one items to a docketing system for docketing.
2. The method of claim 1, further comprising determining one or more docket tasks associated with each item requiring docketing individually.
3. The method of claim 1, further comprising determining one or more deadlines associated with each item requiring docketing individually.
4. The method of claim 1, further comprising labeling each item.
5. The method of claim 1, further comprising sorting each item into one or more categories.
6. The method of claim 5, further comprising applying structured text to each item, the structured text denoting the one or more categories.
7. The method of claim 1, further comprising directing each item to one or more locations.
8. The method of claim 1, further comprising flagging at least one of the more than one items for further review.
9. The method of claim 1, further comprising identifying each of the more than one items to be docketed.
10. The method of claim 9, wherein identifying each of the more than one items to be docketed comprises analyzing the identified omnibus documents using an auxiliary annotation system.
11. The method of claim 9, wherein identifying each of the more than one items to be docketed comprises analyzing the identified omnibus documents with optical character recognition.
12. The method of claim 1, wherein identifying omnibus documents comprises performing optical character recognition.
13. The method of claim 12, wherein performing optical character recognition includes identifying one or more codes, phrases, templates, or other objects indicating different items within each identified omnibus document.
14. The method of claim 1, wherein identifying omnibus documents comprises using an auxiliary annotation system.
15. The method of claim 14, further comprising applying one or more annotations to each of the identified omnibus documents indicating different items therein.
1. A method comprising: receiving an electronic communication with an omnibus document, the omnibus document containing more than one items, each item requiring docketing individually;
identifying each of the more than one items which require docketing individually;
applying one or more annotations at identified locations within the omnibus document indicating an end of one item and a start of another item;
identifying the one or more annotations;
splitting the omnibus document into individual items based on the identified locations within the omnibus document; and sending each of the more than one items to a docketing system for docketing.
2. The method of claim 1, further comprising determining one or more docket tasks associated with each item requiring docketing individually.
3. The method of claim 1, further comprising determining one or more deadlines associated with each item requiring docketing individually.
4. The method of claim 1, further comprising labeling each item.
5. The method of claim 1, further comprising sorting each item into one or more categories.
6. The method of claim 5, further comprising applying structured text to each item, the structured text denoting the one or more categories.
7. The method of claim 1, further comprising directing each item to one or more locations.
8. The method of claim 1, further comprising flagging at least one of the more than one items for further review.
9. The method of claim 1, further comprising identifying the omnibus document prior to identifying each of the more than one items to be docketed.
11. The method of claim 9, wherein identifying the omnibus document comprises using an auxiliary annotation system.
10. The method of claim 9, wherein identifying the omnibus document comprises performing optical character recognition.
12. The method of claim 1, wherein identifying each of the more than one items to be docketed comprises analyzing the omnibus document with optical character recognition.
13. The method of claim 12, wherein optical character recognition is used to identify one or more codes, phrases, templates, or other objects indicating different items in the omnibus document.
14. The method of claim 1, wherein identifying each of the more than one items to be docketed comprises analyzing the omnibus document using an auxiliary annotation system.
15. The method of claim 14, further comprising applying one or more annotations to the omnibus document indicating different items therein.
Table 1
Therefore, it would have been obvious to one of ordinary skill in the art of data processing at the time the invention was made to modify the invention as claimed in the instance application by substituting analyzing each document associated with the file, and identifying omnibus documents within the plurality of electronic communications, since an omission and addition of a cited limitation would have not changed the process according to which the method and system as claimed.
Therefore, the use of analyzing the associated documents and splitting would be an obvious variation in the art for the purpose of achieving the same end results having the document decided annotations would not interfere with the functionality of the steps previously claimed and would perform the same function.
The independent and dependent claims 16-20 are rejected for fully incorporating the errors of their respective base claims by dependency.
Allowable Subject Matter
12. Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and double patenting rejection, set forth in this Office action. The present invention relates to DOCUMENT SPLITTING TOOL. The closest prior art Lundberg et al. is directed to a portfolio management specifically patent docketing system. Lee relates to splitting documents with XML mark-ups. Bird is related to choose certain parts of an omnibus record. However, Lumber, Lee, and Bird either singularly or in combination, fail to anticipate or render obvious the recited features identifying locations within a document, specifically and end of start of certain item, also the annotations then sending each of the more than one items to a docketing system for docketing.
Bleiweiss et al (US 2015/00112805) relates to Collaborative Matter Management and Analysis, specifically to select a master file for applying tags that are associated with the document (e.g., a document card is created for the document as if you added the document directly from the system), and if the user chose to post the document to the Feed, the document is posted to the Feed. However, either singularly or in combination, fail to anticipate or render obvious the recited features identifying locations within a document, specifically and end of start of certain item, also the annotations then sending each of the more than one items to a docketing system for docketing depending on the location and splitting them based on the identified locations.
Conclusion
13. The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
GARG; Manish U. US-20190114360-A1, relates to split the bundled documents into individual K-1 documents. According to an embodiment, the classifier-enabled document splitter 52a may first extract the bundled K-1 documents from the ZIP package before splitting the bundled documents into individual K-1 documents.
Vacek; Thomas US-20190385254-A1, relates to analyze the data in the docket entries, which may include docket summaries, documents and/or other information, and may apply customized rules and machine learning algorithms to identify docket entries corresponding to motions and docket entries corresponding to orders, and to link affecting orders to affected motions.
Nelson; Steven A. US-20200293604-A1, relates to the use of the artificial intelligence may generate appropriate annotations from the analyzed content suggestions and associate the annotation to a location within the original content of the document. The document, with the new annotations may then be presented to a user, such as the document author, for further review.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELICA RUIZ whose telephone number is (571)270-3158. The examiner can normally be reached M-F 10:00 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boris Gorney can be reached at (571) 270-5626. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANGELICA RUIZ/ Primary Examiner, Art Unit 2154 March 18, 2026