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 .
This Office Action is responsive to communication filed on 06/27/2025.
Claims 1 – 20 are currently pending.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/12/2025 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 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 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1- 20 of U.S. Patent No. 12,248,504 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters claimed in instant application can also found in patent ‘504.
In claim 1 of instant application, Applicant claims a “system comprising processing circuitry having access to memory, the processing circuitry configured to: determine a related document from a plurality of candidate documents based on an attribute for an input document; determine one or more common field values for a common field based on the related document, wherein the common field includes a common field classification associated with the input document and the related document; and set, based on the one or more common field values, a field value for a field of one or more of the input document or the related document, wherein the field includes the common field classification”.
Similar limitations also found in claim 1 of ‘504. Certain limitations found in claim 1 of ‘504 but not in claim 1 of instant application such as “determine an attribute for an input document for execution by a signer; generate a similarity score … using a machine learning model…determine a subset of the candidate…”.
It would have been obvious to one with ordinary skill in the art before the effective filling date of the claim invention to broaden the claims at no additional cost in development.
The following is the table comparison between instant application and ‘504.
Claim 1 of instant application 19/253,439 Claim 1 of ‘504
A system comprising processing circuitry having access to memory, the processing circuitry configured to:
A system for electronic document management, wherein the system comprises one or more processors having access to a memory, the one or more processors configured to:
determine a related document from a plurality of candidate documents based on an attribute for an input document;
determine an attribute for an input document for execution by a signer; generate a similarity score for each of a plurality of candidate documents using a machine learning model, wherein using the machine learning model comprises providing the attribute as an input to the machine learning model; determine a subset of the candidate documents based on the similarity scores generated for each of the plurality of candidate documents;
determine one or more common field values for a common field based on the related document, wherein the common field includes a common field classification associated with the input document and the related document;
based on a determination that a field classification for a first field of the input document corresponds to a field classification for a second field of a related document of the subset of the candidate documents, generate a common field that includes the field classification of the first field;
and set, based on the one or more common field values, a field value for a field of one or more of the input document or the related document, wherein the field includes the common field classification.
and set one or more of a first field value of the first field or a second field value of the second field to a common field value of the common field
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 an abstract idea without significantly more.
Step 1:
Claims 1 - 20 are directed to “a method, a system, computer readable storage media”, and therefore, directed to a statutory category.
Step 2A, Prong One:
The independent claims 1, 15, 19 include the following limitations that directed to an abstract
idea:
“determine a related document from a plurality of candidate documents based on an attribute for an input document”, as drafted, recites a mentally process as an evaluation or judgement. One can mentally judge related/similarity document from an attribute of an input document. Comparing document attributes (e.g., tags, authors, keywords) to identify relationships is a task that has historically been done manually by humans. Nothing in the claim element precludes the step from practically being performed in the mind. This is also consistent as in Para. 0087 - 0089 of the Disclosure, where one can mentally determine an attribute of input document and determine the similarity between the attribute and candidate documents.
“determine one or more common field values for a common field based on the related document, wherein the common field includes a common field classification associated with the input document and the related document” as drafted, recites a mentally process as an evaluation or judgement. One can mentally judge related/similarity document from an attribute of an input document. Using a "common field" (like a topic, classification code, or field name) to relate documents is a fundamental business practice or mental process, similar to comparing an input document metadata to a database to find matching “common field”. This is also consistent as in Para. 0095 of the Disclosure, where one can mentally determine an attribute of input document and “comparing tag/prompt combinations of fields in the input document and fields in the related documents”.
“and set, based on the one or more common field values, a field value for a field of one or more of the input document or the related document, wherein the field includes the common field classification” as drafted, recites a mentally process as an evaluation or judgement. One can mentally perform setting a value for the “common field” of a document after observing the data. This is also consistent as in Para. 0098 of the Disclosure, where one can mentally “determine common filed values by comparing prompts and corresponding tags of at least two related documents”.
Step 2A, Prong Two:
The claim recites the following additional elements:
The system includes a storage device, processors, instruction to perform the method, and a computer readable storage media, which is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
The additional limitations, individually or in combination, do not integrated the abstract idea into a practical application, even viewing the claims as a whole, because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case, the “a storage device, processors, instruction to perform the method, and a computer readable storage media” is identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); "computer-implemented" and performed by "one or more processors", a system includes memory storing instruction coupled to a processor, a "non-transitory computer readable medium processors are considered insignificant extra- solution activity, and do not take the claim limitations out of the mental processes grouping. See MPEP - 2106.05(g) ("whether the limitation is significant").
Accordingly, the additional limitations are not providing significantly more than the
judicial exception. Looking at the claim as a whole does not change this conclusion and
therefore, the claim is ineligible.
Claims 1 – 14, 19 - 20, Applicant claims the abstract idea on a non-transitory computer
readable medium with instructions and processor to carry-out the method as in claim 15,
without adding further limitations that amount to more than generally linking the use of
the exception to a particular technological environment. Generic computer components
recited as performing generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the abstract idea with a
computerized system. The use of generic computer components to "determine common filed and setting value" do not impose any meaningful limit on the computer implementation of the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the
above-identified judicial exception (the abstract idea).
The dependent claim 2 - 3, 16 – 18, 20 include “generate a container comprising the input document and the related document; update the container to include the common field; add, based on a determination that an electronic document is related to at least one document stored in the container, the electronic document to the container; and based on the electronic document being added to the container and a determination that a field classification for a field of the electronic document corresponds to the common field classification for the common field, set a field value for the field of the electronic document to the one or more common field values for the common field”, and “generate data for a graphical user interface, the data comprising an indication of the related document; output, for display, the data to a user device; receive, from the user device, an indication of a selection indicating the related document; and generate, based on the indication of the selection, the container to include the input document and the related document” as drafted this recites a mentally performable process as an evaluation or judgement. Collecting, classifying, and organizing electronic documents (e.g., creating a "container") and mapping fields are tasks that can be performed mentally or with basic human organization. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 4, include “generate data for a graphical user interface, the data comprising an indication of at least the common field; output, for display, the data to a user device; receive, from the user device, a signal indicating a new common field value for the common field; and update the one or more common field values of the common field to the new common field value based on the signal received from the user device.”, are identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II).
The dependent claims 5, include “wherein to determine the related document from the plurality of the candidate documents, the processing circuitry is configured to: generate, based on the attribute for an input document, similarity scores for each of the plurality of candidate documents; generate an ordered list of the plurality of candidate documents based on the similarity scores generated for each of the plurality of candidate documents; and determine a subset of documents from the plurality of the candidate documents based on one or more thresholds associated with the ordered list, wherein the subset of documents includes the related document”, as drafted this recites a mentally performable process as an evaluation or judgement. Collecting, classifying, and organizing electronic documents (e.g., creating a "container") and mapping fields are tasks that can be performed mentally or with basic human organization. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 6, include “wherein to determine the one or more common field values for the common field the processing circuitry is configured to: based on a determination that a field classification for a first field of the input document corresponds to a field classification for a second field of the related document, generate the common field to include the one or more common field values as one or more of a first field value of the first field or a second field value of the second field, and to include the common field classification as the field classification of the first field or the second field” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 7 - 8, include “obtain the input document from a user device, wherein the input document is accessible to a user account associated with the user device, and wherein the plurality of candidate documents are accessible to the user account”, and “wherein the processing circuitry is configured to determine the attribute for the input document responsive to obtaining the input document”, as drafted this recites a mentally performable process as an evaluation or judgement. Merely receiving, gathering, or accessing data (like an input document) that is already available to a user account is viewed as a foundational, abstract concept rather than a technological invention. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 9 - 10, include “provide a machine learning model with a plurality of synthetic documents; train the machine learning model with the plurality of synthetic documents by grouping the plurality of synthetic documents into clusters with ensemble clustering; provide the attribute as an input to the machine learning model; generate a similarity score for each of the plurality of candidate documents; and determine the related document based on the similarity scores generated for each of the plurality of candidate documents” as drafted this recites a mentally performable process as an evaluation or judgement. The steps like "generating a similarity score" and "determining a related document" are typical of organizing information, which courts view as a mental process. According to the USPTO 2024 AI Guidance, "training" a model is considered incident to the nature of machine learning, and may be seen as a conventional application of algorithms.
The dependent claims 11, include “wherein the processing circuitry is further configured to determine the attribute for the input document based on content of the input document”, as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 12, include “wherein the processing circuitry is further configured to obtain an envelope comprising the input document and the attribute for the input document” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 13, include “wherein an envelope comprises the input document and an indication of a subject of the input document, and wherein the processing circuitry is further configured to determine the attribute based on the subject of the input document” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 14, include “wherein an envelope comprises the input document and an indication associated with the common field classification, and wherein the processing circuitry is further configured to determine the attribute based on the indication of the common field classification of the envelope”, as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The following are some closest arts:
Stoica et al (U.S. 2017/0161375 A1) discloses a method and system for clustering documents based on textual content including the teaching of generate a signature for each document in the form of sequence of hashes (abstract). Further Stoica teaches store signature elements into fields and matching with other documents using signature, thereby clustering documents by matching signature (Fig. 2 of Stoica).
Coquard et al (U.S. 2020/0327172 A1) discloses a method, system for processing contract documents including the teaching of parsing documents to identify parameter(s) that correspond to a plurality of predetermined fields (Fig. 1 – 2, abstract of Coquard).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161
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