United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Boi 1450
Alexandria, Virginia 223 13-1*50
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
Donald P. Coleman
26285 7590 06/12/2006
KJRKPATRICK & LOCKHART NICHOLSON GRAHAM LLP
535 SMITHFIELD STREET
PITTSBURGH, PA 15222
ROBINSON, GRETA LEE
DATE MAILED: 06/12/2006
Please find below and/or attached an Office communication concerning this application or proceeding.
PTO-90C (Rev. 10/03)
Office Action Summarv
COLEMAN, DONALD P.
Greta L. Robinson
- The MAILING DATE of this communication appears on the cover sheet with the correspondence address -
Period for Reply
A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.
- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).
1 )^ Responsive to communication(s) filed on 22 March 2006 .
2a)D This action is FINAL. 2b)KI This action is non-final.
3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.
Disposition of Claims
4) K Claim(s) 1-7.9-33 and 35-37 is/are pending in the application.
4a) Of the above claim(s) is/are withdrawn from consideration.
5) D Claim(s) is/are allowed.
6) D Claim(s) is/are rejected.
7) Q Claim(s) is/are objected to.
8) [3 Claim(s) 1-7. 9-33 and 35-37 are subject to restriction and/or election requirement.
9) D The specification is objected to by the Examiner.
10)D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.
Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
11 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
Priority under 35 U.S.C. § 119
12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:
1 .□ Certified copies of the priority documents have been received.
2. Q Certified copies of the priority documents have been received in Application No. .
3. Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.
1) □ Notice of References Cited (PTO-892)
2) CD Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) O Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08)
Paper No(s)/Mail Date .
4) Q Interview Summary (PTO-413)
Paper No(s)/Mail Date. .
5) □ Notice of Informal Patent Application (PTO-152)
6) □ Other: .
U.S. Patent and Trademark Office
PTOL-326 (Rev. 7-05)
Office Action Summary
Part of Paper No./Mail Date 20060608
Application/Control Number: 09/998,152 Page 2
Art Unit: 2168
1. Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1 and 32, drawn to processing documents in a database having at
least one record, classified in class 705, subclass 35.
II. Claims 2-7, 9-31 , 33 and 35-37, drawn to automated aggregation and
authentication of asset documents, classified in class 707, subclass 38.
2. The inventions are distinct, each from the other because of the following reasons:
Inventions I and II are unrelated. Inventions are unrelated if it can be shown that
they are not disclosed as capable of use together and they have different designs,
modes of operation, and effects (MPEP § 802.01 and § 806.06). In the instant case, the
different inventions depict different modes of operation. For example, Invention II
requires associating as asset with a record in a database, inventorying an asset
document and generating common information from a plurality of records pursuant to
securitization of the multiple assets; this mode of operation is not required of Invention I.
Invention I is concerned with analysis of the contents of the data, while no generation of
common information takes place or inventorying as cited in Invention II.
3. Because these inventions are independent or distinct for the reasons given
above and have acquired a separate status in the art in view of their different
classification, restriction for examination purposes as indicated is proper.
Application/Control Number: 09/998,152 Page 3
Art Unit: 2168
4. Because these inventions are independent or distinct for the reasons given
above and the inventions require a different field of search (see MPEP § 808.02),
restriction for examination purposes as indicated is proper.
5. Applicant is advised that the reply to this requirement to be complete must
include (i) an election of a species or invention to be examined even though the
requirement be traversed (37 CFR 1 .143) and (ii) identification of the claims
encompassing the elected invention.
6. The election of an invention or species may be made with or without traverse. To
reserve a right to petition, the election must be made with traverse. If the reply does not
distinctly and specifically point out supposed errors in the restriction requirement, the
election shall be treated as an election without traverse.
7. Should applicant traverse on the ground that the inventions or species are not
patentably distinct, applicant should submit evidence or identify such evidence now of
record showing the inventions or species to be obvious variants or clearly admit on the
record that this is the case. In either instance, if the examiner finds one of the inventions
unpatentable over the prior art, the evidence or admission may be used in a rejection
under 35 U.S.C.103(a) of the other invention.
Application/Control Number: 09/998,152
Art Unit: 2168
8. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Greta L. Robinson whose telephone number is
(571)272-4118. The examiner can normally be reached on M-F 9:30AM-6:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Tim T. Vo can be reached on (571 )272-3642. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
June 8, 2006