DETAILED ACTION
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 .
Response to Amendment
Applicant has amended claims 1, 8 and 15 in the amendment filed on 8/24/2026. Claims 1-20 are currently pending in the present application.
Response to Arguments
Applicant’s arguments filed on 8/24/2026 with respect to the claims 1-20 have been considered but they are moot in view of the new ground of rejection.
Specification
The amendment made to the specification filed on 8/24/2026 has been considered and entered.
Examiner’s Remarks
After further reviewed Applicant's arguments (i.e., pages 9-11 of the Applicant’s Remarks, and in light of the original specification, paragraphs [0007] – [0054]), the claimed amendment filed on August 24, 2026 overcomes the 35 U.S.C. § 103 rejections. The limitations as added and/or amended to the independent claims included additional elements that the combination of Cramer et al., Schrichte and Giannetti fails to disclose the amended claims 1, 8 and 15. Therefore, the 35 U.S.C. § 103 rejections set forth in the last office action with respect to the claims 1-20 have been withdrawn. However, as stated by the Applicant “Applicant therefore respectfully requests that the rejection be held in abeyance by the Examiner until otherwise allowable subject matter is indicated”, therefore the double patenting rejection in the last office action is hereby maintained in this office action.
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.
Claims 1, 8 and 15 of the U.S. Patent number 12,332,924 B2 provisionally rejected under the judicially created doctrine of nonstatutory double patenting as being unpatentable over claims 1, 8 and 15 of the present application.
Initially, it should be noted that the present application and the U.S. Patent number 12,332,924 B2 have the same inventive entities. The inventor and/or assignee for the present application and the U.S. Patent are Jeremy Duke as the inventor and Open Text SA ULC as the assignee.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As per claims 1, 8 and 15; the claims recite the limitations with the underlined features as added “identifying, based on the coordinate system, one or more other instances of the determined textual content within the original document; and generating the redacted document based on the determined textual content and the one or more other instances, wherein the redacted document comprises the blocked-out portion and one or more additional blocked-out portions corresponding to the one or more other instances, wherein the original document remains unmodified by the generating of the redacted document” contains subject matter which was not described in the specification. The Applicant has not provided any supports for the limitations with the underlined features, and the Examiner could not find any connections between the amended limitations and the Applicant’s instant disclosure.
Clarification or correction is respectfully requested.
Note, the dependent claims are also rejected because they depend on and/or do not remedy the deficiencies inherited by their parent claims.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection, and a terminal disclaimer is filed to overcome the double patenting rejection as set forth in this Office action.
Reasons for Allowance
The following is an examiner’s statement of reasons for allowance:
After further consideration of the prior arts of record and conducting different searches in PE2E - SEARCH, Similarity and More Like Doc Searches, Google Scholar, and IP.COM, it appears that the prior arts of record such as Cramer et al. (US 2020/0097713 A1), Schrichte (US 2021/0303778 A1) and Giannetti (US 2005/0216832 A1) do not disclose, teach or fairly suggest the limitations as a whole in the independent claims 1, 8 and 15.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bai D. Vu whose telephone number is (571) 270-1751. The examiner can normally be reached 9:00 - 5:30.
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, Tony Mahmoudi can be reached at (571) 272-4078. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BAI D VU/Primary Examiner, Art Unit 2163 9/3/2026
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