DETAILED ACTION
This action is in response to communication filed on 7/1/2025.
Claim 1 is pending.
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 .
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,363,124. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of this application recites the same method in broader form: performing a docgen process that generates a generated document stored in a collaboration system; performing, in the collaboration system, content analysis on (i) the generated document and (ii) docgen I/O; and based on results of the content analysis, modifying access parameters of the generated document.
Every embodiment of patent claim 1 is an embodiment of instant claim 1. Instant claim 1 omits only that the document is hosted for collaboration workflows and that the access parameters determine the scope of those workflow activities. “Stored in a collaboration system” is not patentably distinct from “hosted by a collaboration system.” “Docgen I/O” is not patentably distinct from “an input to and an output of the docgen process.” Omitting the “wherein” clause does not add a patentable distinction.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Anjam et al. (US 2022/0138160) in view of Lehmann et al. (US 2015/0026755).
Regarding claim 1, Anjum discloses 1. A method for handling collaboration activities in a collaboration system, the method comprising:
performing a docgen process, wherein the docgen process generates a generated document that is stored in a collaboration system (Anjum generates documents from templates (boilerplate, merge fields, template logic) and stores them in the ODS document store; [0030] “The document module 210 can generate new documents, manage and update documents stored by the ODS 110, and maintain a record of edits (or other updates) to documents within the ODS 110. In some implementations, the document store 215 stores the documents, document versions, and other metadata related to the stored documents managed by the document module 210”, [0047] “an automatic template can be used to generate a contract for a service agreement, with merge fields related to the known information about the client and the service purchase, and with template logic to include different clauses depending on the specific service being purchased”);
performing, in the collaboration system, content analysis on (i) the generated document (Anjum inspects clauses content and clause type of the generated document including sensitivity and dollar amount content inside the ODS; [0032] “the ODS 110 can include clause types representing an area of relevance … such as a level of secrecy of the contained information (for example a “sensitive information” clause type) … the ODS 110 uses logic rules based on clause types to assign viewing and editing permissions for clauses associated with one or more clause types”, [0040] “a permission definition can include logic rules detecting clauses with content including a threshold dollar amount or a change in a threshold dollar amount and assigning permissions to require approval of such changes (such as requiring approval from a finance team when changing the prices in a sales contract)”); and
based at least in part on results of the content analysis, modifying access parameters of the generated document (Anjum assigns permission definitions from that analysis at creation time and later modifies them; [0041] “permissions are initially assigned at the time a document is created and can later be further modified by the document creator/owner (or another authorized user). For example, documents can be generated based on a template or other pre-defined shell which may include default permission definitions granting permissions to appropriate users 130 when a document is created using the template”).
However, the prior art does not explicitly disclose performing content analysis on (ii) docgen I/O.
Lehmann in the field of the same endeavor discloses techniques for providing enterprise collaboration content governance. In particular, Lehmann teaches the following:
performing content analysis on (ii) docgen I/O (Lehmann’s rule engine, inside an enterprise collaboration portal, analyzes both the content being created and the creation require context. That context is the creation/generation I/O: requesting user, document creation context, collaboration page, collaboration group members, document template, and document classification; [0034] “the rule engine 109 receives context information from the portal application regarding the upload request. Context information can include, for example, requesting user, the context to create (here a document), collaboration page of request, members of the collaboration group, and the like. The rule engine 109 determines based on the rule 116 that a document upload request context (as relayed from the portal application 107 to the rule engine 109) requires at least an application of: 1) a document template; 2) a role analysis of users associated with the collaboration page; and 3) a verification of document classification. The rule engine 109 analyzes the application of the appropriate/relevant pattern(s) 118 against the content in view of the request context and generates an analysis/rule result to transmit to the action engine 110”, [0052] “the portal application passes the content creation request, content to be created, as well as context information associate with the content creation request to the CGF. For example, the portal application could pass the content creation request, the content creation user, an EP page the content request originated from, a list of users allowed to access the origination page (for a collaboration page), and the like”).
Therefore, it would have been obvious to a person of ordinary skill in the art at the time the invention was effectively filed to combine the prior art with the teaching of Lehmann. One would have been motivated because combining the prior art with Lehmann yields a generated document whose access parameters are set from both generated content and generation I/O.
Conclusion
For the reason above, claim 1 has been rejected and remain pending.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIMMY H TRAN whose telephone number is (571)270-5638. The examiner can normally be reached Monday-Friday 9am-5pm PST.
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, Chris Parry can be reached at 571-272-8328. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JIMMY H TRAN
Primary Examiner
Art Unit 2451
/JIMMY H TRAN/Primary Examiner, Art Unit 2451
