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 .
Status of Claims
Claim 1 remain pending and is ready for examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/28/2025, 02/12/2026 and 04/17/2026, were filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejections are 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 rejections are appropriate where the claims at issue 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 reference 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. 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 §§ 706.02(1)(1) - 706.02(1)(3) 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/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
http://www.uspto.gov/patents/process/fil e/efs/g uid ance/e TD-info-1.jsp.
Claim 1 non-provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-18 of US. Patent No. 12585707. This is a non-provisional nonstatutory double patenting rejection. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the instant application are found in the US. Patent No. 12585707.
Claim 1 non-provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-19 of US. Patent No. 12380149. This is a non-provisional nonstatutory double patenting rejection. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the instant application are found in the US. Patent No. 12380149.
Furthermore, Claim 1 non-provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-28 of US. Patent No. 12019667. This is a non-provisional nonstatutory double patenting rejection. Although the conflicting claims are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the instant application are found in the US. Patent No. 12019667.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1:
Independent claim 1 recites a method. Therefore, step 1 is satisfied for claim 1.
Step 2A Prong One:
The claim(s) recite(s) mental process steps of:
partitioning a corpus of electronic documents into a set of disclosed documents accessible to a receiving party and a set of withheld documents inaccessible to the receiving party; (this step recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP § 2106.04(a)(2)(II). The concept of partitioning/grouping/classifying a corpus of electronic documents is a mental process (e.g., observations, evaluations, judgments, and opinions) that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’). ).
generating a content-by-example log for a withheld document from the set of withheld documents, …: (this step recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP § 2106.04(a)(2)(II). The concept of partitioning/grouping/classifying a corpus of electronic documents is a mental process (e.g., observations, evaluations, judgments, and opinions) that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’). ).
generating a first array representation for the withheld document; (this step recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP § 2106.04(a)(2)(II). generating array is a mental process (e.g., observations, evaluations, judgments, and opinions) that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’). ).
generating a plurality of second array representations for a corresponding plurality of the disclosed documents; (this step recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP § 2106.04(a)(2)(II). The concept of generating array is a mental process (e.g., observations, evaluations, judgments, and opinions) that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’). ).
calculating a similarity score for each of the plurality of disclosed documents relative to the withheld document by applying a similarity function to the first and second array representations; (this step recite mathematical algorithms that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’).
associating, within the content-by-example log, an identifier for the withheld document with identifiers for the plurality of disclosed documents and their calculated similarity scores. (this step recite abstract mental processes that can be performed by the human mind or practicably with pen and paper. MPEP § 2106.04(a)(2)(II). The concept of associating an identifier for the withheld document with identifiers for the plurality of disclosed documents and their calculated similarity scores. is a mental process (e.g., observations, evaluations, judgments, and opinions) that is applied and performed in a computing environment—i.e., an abstract idea. See MPEP § 2106.04(a)(2)(I]); see also Elec. Power Grp., 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.”’). ).
Step 2A Prong Two:
The claim/s recites the combination of the additional elements, the additional elements in the claim is:
providing the content-by-example log to the receiving party.
The bold element above is directed to mere insignificant extra-solution activity. See MPEP 2106.04(d)(I) and 2106.05(g). The act of transmitting data based on the abstract idea fails to integrate the judicial exception into a practical application as it does not differ from those actions that have previously been held to be extra-solution activity, such as “presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price”, “selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display”, and “requiring a request from a user to view an advertisement and restricting public access.” The judicial exception is not integrated into a practical application because the remaining additional elements amount to nothing more than generic components recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. See MPEP 2106.04(d)(I) and 2106.05(f).
Step 2B:
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements amount to nothing more than mere instructions to apply the exception using generic computer component(s) and insignificant extra-solution activity. These cannot provide an inventive concept, and thus the claims are patent-ineligible.
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 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.
(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.
Claim 1 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sharon et al., U.S. Patent No: US 11775522 B2 (Hereinafter “Sharon”).
Regarding claim 1, Sharon discloses A method comprising:
partitioning a corpus of electronic documents into a set of disclosed documents accessible to a receiving party and a set of withheld documents inaccessible to the receiving party (see col. 14 line 30-67, col.25 line 44-67 and col.26 line 1-5, wherein private data corresponds withheld documents and public data corresponds to disclosed documents);
generating a content-by-example log for a withheld document from the set of withheld documents, the generating comprises (see col. 14 line 30-67, col.24 line 20-37, col.25 line 44-67 and col.26 line 1-5, wherein the proxy representation corresponds to the content-by-example log as claimed):
generating a first array representation for the withheld document (see col. 14 line 30-67, col.24 line 20-37, col.25 line 44-67 and col.26 line 1-5, wherein the proxy representation includes private data and public data);
generating a plurality of second array representations for a corresponding plurality of the disclosed documents (see col. 14 line 30-67, col.24 line 20-37, col.25 line 44-67 and col.26 line 1-5, wherein the proxy representation includes private data and public data);
calculating a similarity score for each of the plurality of disclosed documents relative to the withheld document by applying a similarity function to the first and second array representations (see col. 14 line 30-67, wherein similarity score can be applied); and
associating, within the content-by-example log, an identifier for the withheld document with identifiers for the plurality of disclosed documents and their calculated similarity scores (see fig.6, col. 7 line 21-67, col. 14 line 30-67 and col. 23 line 32-67, wherein private data can be assigned/matched set of public data, wherein a similarity score can be assigned to the data when generating the proxy representation); and
providing the content-by-example log to the receiving party (see fig.7 step 712).
Related art:
Srinivasan (US 20170230387 A1) discloses “This document describes apparatuses and techniques for monitoring social media for breach of organizational privacy. In some aspects, these techniques receive social media content from a social media site or social media stream. The social media content is compared with organizational information that includes private information and public information to determine an amount of private data disclosed by the social media content. Based on a ratio of amounts of the private data and public data disclosed, a score is provided that indicates a degree to which the social media content breaches organizational privacy.”
Chang (US 20140047507 A1) discloses “publicly providing protected electronic documents, wherein a first user, after a user authentication process, transmits a private electronic document from a data terminal via a communications network to a private storage medium of a data processing device and stores the document on said medium. Thereafter, an analysis and comparison module is activated, which analyzes and compares the private electronic document to the public electronic documents in a public storage medium, and when a second user accesses the private electronic document of the first user, a public electronic document from the public storage medium is provided by the authentication and access control module instead of the private electronic document.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHER N ALGIBHAH whose telephone number is (571)272-0718. The examiner can normally be reached on Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aleksandr Kerzhner can be reached on (571) 270-1760. The fax phone number for the organization where this application or proceeding is assigned is 571-273-1264.
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/MAHER N ALGIBHAH/Primary Examiner , Art Unit 2165
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