Practitioner's Docket No. 3324/102
`
`PA TENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re application of: Atle Hedloy
`Group No.: 2176
`Application No.: 12/182,048
`Examiner: Tran, Quoc A.
`Filed: 07/29/2008
`For: Method, System and Computer Readable Medium for Addressing Handling from a Computer
`Program
`
`Mail Stop Amendment
`Commissioner for Patents
`P.0. Box 1450
`
`Alexandria, VA 22313-1450
`
`AMENDMENT TRANSMITTAL
`
`1.
`
`Transmitted herewith is an amendment for this application.
`
`2.
`
`Applicant is a small entity.
`
`STATUS
`
`EXTENSION OF TERM
`
`3.
`
`The proceedings herein are for a patent application and the provisions of 37 C.F.R. 1.136 apply.
`Applicant believes that no extension of term is required. However, this conditional petition is
`being made to provide for the possibility that applicant has inadvertently overlooked the need for
`a petition for extension of time.
`
`FEE FOR CLAIMS
`
`4.
`
`The fee for claims (37 C.F.R. 1.16(b)-(d)) has been calculated as shown below:
`
`
`(Col. 1)
`(Col. 2)
`(Col. 3)
`SMALL ENTITY
`CLAIMS
`REMAINING HIGHEST NO.
`AFTER
`PREVIOUSLY
`PRESENT
`ADDIT.
`
`AMENDMENT
`PAID FOR
`EXTRA
`RATE
`FEE
`
`
`TOTAL
`22
`—
`20
`=
`2
`X
`$
`26.00
`=
`$
`52.00
`
`
`INDEP.
`2
`—
`3
`=
`0
`X
`$
`110.00
`=
`$
`0.00
`
`
`FIRST PRESENTATION OF MULTIPLE DEP. CLAIM
`+
`$
`0.00
`=
`$
`0.00
`TOTAL
`
`ADDIT. FEE
`
`$
`
`52.00
`
`Total additional fee for claims required $52.00
`
`Amendment Transrnittal——page 1 of 2
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`5.
`
`6.
`
`REPLACEMENT DRAWINGS
`
`Attached are 14 sheets of replacement drawings.
`
`TERMINAL DISCLAIlVIER
`
`Attached is a terminal disclaimer.
`
`Fee:
`
`$70.00
`
`INFORMATION DISCLOSURE STATEMENT
`
`7.
`
`Attached is a supplemental information disclosure statement.
`
`Fee:
`
`$1 80.00
`
`TOTAL FEES DUE
`
`8.
`
`The total fees due are:
`
`Fees for Additional Claims
`Information Disclosure Statement
`Terminal Disclaimer
`
`$ 52.00
`$180.00
`$ 70.00
`
`Total Fees Due:
`
`$302.00
`
`FEE PAYMENT
`
`9.
`
`Authorization is hereby made to charge the amount of $302.00 to Deposit Account No. 19-
`4972.
`
`Charge any additional fees required by this paper or credit any overpayment in the manner
`authorized above.
`
`Date: December 8, 2010
`
`/Jakub M. Michna, #61,033/
`
`
`Jakub M. Michna
`
`Registration No. 61 ,033
`SUNSTEIN KANN MURPHY & TIMBERS LLP
`125 Summer Street
`
`Boston, MA 02110-1618
`US
`617-443-9292
`Customer No. 02101
`
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ 1 02
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`
`Hedloy
`
`Attorney Docket:
`
`3 324/ 102
`
`Serial No.:
`
`12/182,048
`
`Filing Date:
`
`July 29, 2008
`
`Art Unit:
`
`Examiner:
`
`2176
`
`Tran
`
`Invention:
`
`METHOD, SYSTEM AND COMPUTER READABLE MEDIUM FOR
`ADDRESSING HANDLING FROM A COMPUTER PROGRAM
`
`Mail Stop Amendment
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`Dear Sir/Madam:
`
`W
`
`In response to the Office Action dated October 28, 2010, the Applicant submits the
`
`following amendment and remarks.
`
`Amendments to the Specification begin on page 2 of this paper.
`
`Amendments to the Drawings begin on page 6 of this paper.
`
`Amendments to the Claims are reflected in the listing of claims which begin on page 7 of this
`
`paper.
`
`Remarks begin on page 13 of this paper.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`AMENDMENTS TO THE SPECIFICATION
`
`The amendments to the specification indicated below are solely to correct obvious typographical
`
`errors .
`
`Please replace the paragraph beginning on page 3, line 7 0fthe originallyfiled application with
`
`thefollowing amended paragraph:
`
`The above and other objects are achieved according to the present invention by providing a novel
`
`method, system and computer readable medium for providing a fianction item, such as a key,
`
`button, icon, or menu, tied to a user operation in a computer, whereby a single click on the
`
`fianction item in a window or program on a computer screen, or one single selection in a menu in
`
`a program, initiates retrieval of name and addresses and/or other person or company related
`
`information, [[w]] while the user works simultaneously in another program, e.g., a word
`
`processor. The click on the fianction item initiates a program connected to the button to search a
`
`database or file available on or through the computer, containing the person, company or address
`
`related data, in order to look up data corresponding to what the user types, or partly typed, e.g.,
`
`name and/or address in the word processor, the correct data from the database, data related to the
`
`typed data, e.g., the name of the person, company, or the traditional or electronic address, or
`
`other person, or company, or address related data, and alternatively the persons, companies, or
`
`addresses, are displayed and possibly entered into the word processor, if such related data exists.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`Please replace the paragraph beginning on page 7, line 8 0fthe originallyfiled application with
`
`thefollowing amended paragraph:
`
`In FIG. 1, after the user has inserted the address in the word processor, the user commands the
`
`button at step 2 and the program analyzes what the user has typed in the document at step 4.
`
`[[AT]] & step 6, the program decides what was found in the document and if the program found
`
`nothing in the document or what it found was un-interpretable the program goes to step 8 and
`
`outputs an appropriate message to the user and then quits at step 16. The program analyzes what
`
`the user has typed in the document at step 4, for example, by analyzing (i) paragraph/line
`
`separations/formatting, etc.; (ii) street, avenue, drive, lane, boulevard, city, state, zip code,
`
`country designators and abbreviations, etc.; (iii) Mr., Mrs., Sir, Madam, Jr., Sr. designators and
`
`abbreviations, etc.; (iv) Inc., Ltd., PO, L.L.C, designators and abbreviations, etc.; and (v) a
`
`database of common male/female names, etc.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`Please replace the paragraph beginning on page 7, line 19 ofthe originallyfiled application
`
`with the following amended paragraph:
`
`If the program find an e-mail address mailing list/category name telephone number or other
`
`information, at step 10 an appropriate action is performed by the program and then the program
`
`execution quits at step 16. If the program only finds a name or initials, or the like, the program
`
`looks up the name in the database at step 12 and at step 18 the program determines what was
`
`found. If the program finds more than one possible contact/address match, at step 20 the program
`
`displays menu choices to the user to let him choose an appropriate answer. Then at step 22 the
`
`program inserts a correct address and name in the document and then at step 16 the program
`
`quits execution. If the program finds one match exactly, i.e., one contact with one address, the
`
`program inserts the correct address and name in the document at step 22 then quits and then quits
`
`execution at step 16. If the program does not find a name in the database, at step 24 the program
`
`prompts the user to specify an address and then quits execution at step 16. If the program at step
`
`6 finds a name and an address, at step 14 the name is looked up in the database. Then, at step 26,
`
`if no match is found, at step 28 the program inserts an address and a name which are possibly
`
`corrected by the user into the database and then quits execution at step 16. If at step 26, the name
`
`and address is found, at step 32 the program either takes no action or displays t—he th_e data for
`
`the user to edit. If at step 26, the name is found but not the address, the program prompts the user
`
`for a decision at step 30. If the user decides that this is another contact with a same name, the
`
`program goes to step 28. If the user decides that this is a one time occurrence, no action is taken
`
`and the program quits at step 16. If the user decides that the contact has, for example, moved and
`
`that this is a new address, at step 34 one of the old addresses for the contact is replaced with the
`
`new one and the program with—thenew—eneand—thepregram quits at step 16. If the user decides
`
`that this is an additional address for the contact, at step 36 the additional address is inserted into
`
`the database for that contact and execution quits at step 16.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`Please replace the paragraph beginning on page 11, line 21 0f the originallyfiled application
`
`with the following amended paragraph:
`
`FIG. 3 illustrates a starting point in word processor document, such as WORD document,
`
`wherein the user has typed a name of a contact 40. The user commands the button 42, for
`
`example, marked “OneButton,” and the program according to the present invention retrieves the
`
`name 40 from the document, searches a database for the name of the contact 40 and generates a
`
`screen as shown in, for example, FIG. 8. This screen includes a message 68 informing the user
`
`that the contact does not exist in the database and to specify an address, and “OK” buttons 56. At
`
`this point when the user commands the OK button 56, the user returns to the document so that
`
`[[he]] th_e contact's address can be included as in Example 2 above.
`
`Please replace the paragraph beginning on page 13, line 21 0f the originallyfiled application
`
`with the following amended paragraph:
`
`At this point the user may command the Choose button 86 to use the selected address and return
`
`to the document, or the user may command the More >>> button 90 to view how the program
`
`interpreted what [[he]] th_e user typed in the word processor, and possibly change this data,
`
`wherein the program generates an updated screen as shown in, for example, FIG. 11. The
`
`. The updated
`
`screen includes the data 62 which displays the name typed in the word processor as interpreted
`
`by the program, address fields, and the fields for the address type selection 54, such as home,
`
`business, etc., which may be changed by the user before the program stores it in the database, the
`
`Add and Choose button 64, a “<<<Less” button 90 corresponding to the More>>> button 90 for
`
`returning to the screen of FIG. 10, and an "Add this address to the selected contact above" button
`
`92. The user might then command the Add this address to the selected contact above button 92
`
`and the result in the word processor is illustrated in FIG. 4. The user can also cancel the
`
`operations by commanding the Cancel button 60, or command the add choose button 64 to add
`
`this name and address as a new contact and address, or open the database before storing data into
`
`the database by commanding a “Full details” button 88 as will be later described.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`AMENDMENTS TO THE DRAWINGS
`
`Please replace the 17 sheets of original drawings presently of record with the 14 sheets of
`
`replacement drawings presented with this response.
`
`The 14 sheets of replacement drawings presented with this response correct grammatical
`
`mistakes in the original drawings:
`
`0 The spelling of the word “possibly” in item 28 of Fig 1B.
`
`0 The spelling of the word “possibly” in item 28 of Fig 2B.
`
`0 The spelling of the word “address” in item 34 of Fig 2B.
`
`The 14 sheets of replacement drawings presented with this response also incorporate the subject
`
`matter of Figs. la and lb into a single sheet labeled Fig. 1. Similarly, the subject matter of Figs.
`
`2a and 2b is incorporated into a single sheet labeled Fig. 2. No other changes have been made.
`
`Applicant believes that this amendment provides for easier reading of Figs. la, lb, 2a, and 2b.
`
`No new matter has been added with the replacement drawings.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions, and listings, of claims in the application:
`
`Listing of Claims:
`
`What is claimed is:
`
`1. (Currently Amended) A computer-implemented method for finding data related to the contents
`
`of a document using a m computer program running on a computer, the method comprising:
`
`
`displaying the document electronically using the first computer pro gram;
`
`
`while the document is being displayed, analyzing, in a computer process, thedeeument—te
`
`
`identifiy—anyfirst information from the document to determine if the first information is at least
`
`
`one of a plurality of types of information that can be searched for in order to find second
`
`information related to the first information;
`
`retrieVing the first informationthus—identified;
`
`
`providing an input deVice, configured by the first computer program, that allows a user to
`
`
`enter a user command to initiate an operation, the operation comprising (i) performing a search
`
`
`using at least part of the first information as a search term in order to find the second
`
`
`information, of a specific type or types, associated in an information source with the search term,
`
`
`wherein the specific type or types of second information is dependent at least in part on the type
`
`
`or types of the first information, and (ii) performing an action using at least part of the second
`
`information:
`
`in consequence of following receipt by the first computer program of a th_e user command
`
`
`from the input deVice, causing a search searching for the first—information search term in the
`
`information source, using a second computer program, in order to find second information
`
`related to the search term first—information; and
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
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`if searching finds any second information related to the search term first—information,
`
`performing the action anoperation using at least part of the second information, wherein the
`
`action is of a type depending at least in part on the type or types of the first information.
`
`2. (Original) A method according to claim 1, wherein the first information comprises at least one
`
`of name-, person-, company- and address-related information.
`
`
`3. (Currently Amended) A method according to claim 1, wherein performing the action operation
`
`includes performing anoperation the action in the first computer program.
`
`
`4. (Currently Amended)A method according to claim 2, wherein performing the action operation
`
`includes performing the action anoperation in the first computer program.
`
`
`5. (Currently Amended) A method according to claim 3, wherein performing the action operation
`
`
`includes causing addition of at least part of adding the second information to the first information
`
`in the document.
`
`
`6. (Currently Amended) A method according to claim 3, wherein performing the action operation
`
`
`includes causing display of at least part of displaying the second information.
`
`
`7. (Currently Amended) A method according to claim 3, wherein performing the action operation
`
`
`includes causing display of at least part of displaying the second information by the M
`
`computer program.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
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`8. (Currently Amended) A method according to claim 1, fiarther comprising, providing a prompt
`
`for updating the information source application to include the first information.
`
`9. (Currently Amended) A method according to claim 1, fiarther comprising, if the search is not
`
`successful, providing a prompt for updating a—database the information source associated—With
`
`theseeond—eompiiter—piegtam to include the first information.
`
`10. (Currently Amended) A method according to claim 1, wherein receipt by the m computer
`
`program of the user command precedes analyzing the document.
`
`11. (Original) A method according to claim 1, wherein analyzing the document is completed
`
`after the receipt of the user command is completed and before searching is initiated.
`
`12. (Currently Amended) A method according to claim 1, wherein the input device is a fuither
`
`eoinptising—pievidinga graphical input device—for—entny—of—thenser—eomniand.
`
`13. (Currently Amended) A method according to claim 1, wherein the user command is the only
`
`
`command from a user necessary as a condition to initiate initiating performing the operation.
`
`14. (Currently Amended) A method according to claim 1, fiitther—eoniptising—pieviding—a
`
`
`graphical input device for entw of the user command; wherein the input device is a menu; and
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ 1 02
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`the entry of the user command includes a user’s selection of the menu and click on a menu
`
`choice from the menu.
`
`15. (Currently Amended) A method according to claim 1, filrther comprising, if searching results
`
`in a plurality of distinct instances of second information, displaying such instances to enable user
`
`
`selection of one of them for use in performing the action operation.
`
`16. (Currently Amended) A method according to claim 1, wherein the information source a
`
`database is associated with the second computer program and is available on the computer.
`
`17. (Currently Amended) A method according to claim 1, wherein the information source a
`
`database is associated with the second computer program and is available through the computer.
`
`18. (Currently Amended) A computer-implemented method for finding data related to the
`
`contents of a document using a m computer program running on a computer, the method
`
`comprising:
`
`
`displaying the document electronically using the first computer pro gram;
`
`
`while the document is being displayed, analyzing, in a computer process on the computer,
`
`thadoeament—to—identify—any first information from the document to determine if the first
`
`information is at least one of a plurality of types of information that can be searched for in order
`
`to find second information related to the first information, and wherein the first information
`
`comprises at least one of name-, person-, company-, and address-related information;
`
`providing an input device, configured by the first computer program, that allows a user to
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
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`enter a user command to initiate an operation, the operation comprising (i) performing a search
`
`
`using at least part of the first information as a search term in order to find the second
`
`
`information, of a specific type or types, associated with the search term in a user editable
`
`
`information source outside the document, wherein the specific type or types of second
`
`
`information is dependent at least in part on the type or types of the first information, and (ii)
`
`
`performing an action using at least part of the second information for—entw—of—a—user—eommafid,
`
`wherein the input deVice includes a menu;[[,]]
`
`retrieving the first informationthus—identified;
`
`in consequence of following receipt by the first computer program of the user command,
`
`such user command including a user’s selection of the menu and click on a menu choice from the
`
`
`menu, causing a search seafehing for the search term in the information source first—infopmation,
`
`using a second computer program, in order to find second information related to the search term
`
`fipst—infopmation in a th_e user editable information source outside the document; and
`
`if searching finds any second information related to the search term first—infopmation,
`
`performing the action anopeiatiop using at least part of the second information, wherein th_e
`
`
`action is of a type depending at least in part on the type or types of the first information and
`
`
`performing the action operation includes at least causing display of displaying at least part of the
`
`second information.
`
`19. (Currently Amended) A method according to claim 18, filrther comprising, if searching
`
`results in a plurality of occurrences of second information, causing display of displaying such
`
`
`instances to enable user selection of one of them for use in performing the action operation.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
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`20. (Currently Amended) A method according to claim 18, wherein performing the action
`
`
`operation includes causing addition of at least part of adding the second information to the first
`
`information in the document.
`
`21. (New) A method according to claim 1, wherein performing the action includes causing
`
`insertion of at least part of the second information into the document.
`
`22. (New) A method according to claim 1, wherein performing the action includes causing
`
`insertion of at least part of the second information into the document by the first computer
`
`pro gram.
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`REMARKS
`
`The Applicant thanks Examiner Tran for his analysis of the pending claims and
`
`for his time during the examiner interview on November 24, 2010, in which the Tso,
`
`Person, and Miller references were discussed with Bruce Sunstein and Jakub Michna,
`
`attorneys for the Applicant, and Atle Hedloy, the inventor and Applicant herein. The
`
`Examiner agreed that the claims, as amended, distinguish the cited prior art. Examiner
`
`Tran also asked the Applicant to fiarther clarify the analyzing and providing processes of
`
`the independent claims. The amendments to the claims and the remarks below address
`
`the Examiner’s concerns expressed during the interview.
`
`Claims l-22 are currently pending in the application. Claims 21 and 22 are new.
`
`Claims 1 and 3-10, 12-20 are currently amended. No new matter has been added. The
`
`rejections and objections to the claims are addressed below.
`
`Objections
`
`The office action objects to claims 16 and 17 as duplicate claims. Claim 16,
`
`however, is not a duplicate of claim 17. Claim 16 requires an information source that is
`
`“available on the computer”, while claim 17 requires an information source that is
`
`“available through the computer.”
`
`The Applicant files with this response a corrected information disclosure
`
`statement (IDS), relisting those references that the Examiner did not consider in the
`
`previous IDS of January 26, 2009 and also listing new references. Section 3 of the IDS
`
`filed herewith lists issued and pending applications that are related to the present
`
`application. Applicant notes that Application Serial No. l2/841,302 (also before the
`
`Examiner) and the prior art references analyzed in the Accelerated Examination Support
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`Application Serial No. 12/ 1 82,048
`Attorney Docket No. 3324/ l 02
`
`Document (AESD) of July 22, 2010 are of particular interest in relation to the present
`
`application.
`
`Non-Statutory Double Patenting
`
`A terminal disclaimer is filed with this response to overcome the non-statutory
`
`double patenting rejection.
`
`Amendments to the Claims
`
`Claim 1 is directed to a computer-implemented method for finding data related to
`
`the contents of a document using a first computer program. The claim has been amended
`
`to require analyzing first information from the document to determine if the first
`
`information is at least one of a plurality of types of information that can be searched for
`
`in order to find second information related to the first information. Support for this
`
`amendment can be found in the present application at, for example, page 7, line 8 to page
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`8, line 8. The claim also requires providing an input device to allow a user to enter a user
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`command to initiate an operation. Support for such an input deVice can be found at, for
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`example, page 1, lines 17-22, page 3, lines 7-13, and page 5, lines 18-22 ofthe
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`application. According to the claim, the operation comprises:
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`(i) “performing a search using at least part of the first information as a search term
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`in order to find the second information, of a specific type or types, associated in an
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`information source with the search term, ..., wherein the specific type or types of second
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`information is dependent at least in part on the type or types of the first information”
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`(ii) “performing an action using at least part of the second information.”
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`As amended, the claim requires that the action is of a type depending at least in part on
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`the type or types of the first information. Support for these amendments can be found in
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`the Figures of the present application at, for example, Figs. 1a, lb, 2a, 2b and at items 6,
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`8, 10, 12, 14, 26, 27, 28, 29, 30, 31, 32, 34, 36. Support can also be found in the present
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`application at, for example, page 7, line 10 — page 8, line 20. No order is intended in
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`recitation of the claim limitations except as may be otherwise required by the claims.
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`Applicant notes that the current amendments to the claims have not been made for
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`reasons of patentability. Applicant believes that the original claims were patentable over
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`the cited prior art at least because none of the cited references discloses “analyzing a
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`document to identify any first information”, as required by the original claims.
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`Accordingly, Applicant now amends the claims, not to overcome the cited prior
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`art, but instead to provide more context and clarity to the claims. In fact, the limitation
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`described in the previous paragraph has been amended out of the claims, which, in that
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`respect, broadens the claims. On the other hand, the amendments have narrowed the
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`claims in other respects. Yet these narrowing amendments are merely intended to
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`streamline and facilitate prosecution of the claims and are not made to overcome the cited
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`prior art.
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`Distinction 0f the Claimed Subject Matter from the Art ofRecord
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`Claims 1-20 are rejected as obvious in view of the combination of the Tso
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`reference (US Patent No. 6,085,201) and the Person reference (“Special Edition Using
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`Microsoft Word 97”). This combination, however, does not meet the limitations of the
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`amended claims for at least the reasons provided below.
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`As amended, claim 1 requires:
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`1. “analyzing first information from the document to determine if the first
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`information is at least one of a plurality of types of information that can be
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`searched for in order to find second information related to the first
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`information”
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`2. “performing a search
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`in order to find the second information, of a
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`specific type or types,
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`wherein the specific type or types of second
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`information is dependent at least in part on the type or types of the first
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`information”
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`3. “performing the action using at least part of the second information,
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`wherein the action is of a type depending at least in part on the type or
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`types of the first information.”
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`None of the cited prior art references discloses all three of these limitations, which are
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`powerful in distinguishing most, if not all, of the art of record.
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`For example, with respect to the present rejection against the claims, none of the
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`cited prior art references discloses item (1) above, “analyzing first information from the
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`document to determine if the first information is at least one of a plurality of types of
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`information that can be searched for in order to find second information related to the
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`first information.”
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`Tso discloses composing an e-mail message with the help of a context-sensitive
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`template engine. Tso, Abstract. When the template engine receives an input text string,
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`Tso discloses “decomposing” the text string into individual words and comparing the
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`individual words to keywords associated with predetermined templates. Tso, col. 4, lines
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`32-35, col. 5, lines 7-17. The template with the best match between keywords and
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`individual words is chosen as the most appropriate template and that template is
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`presented to the user. Tso, col. 5, lines 7-17.
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`Tso does not analyze first information “from the document to determine if thefirst
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`information is at least one of a plurality of types of information that can be searched for
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`in order to find second information related to the first information”, as required by claim
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`1. This is so because Tso decomposes and compares every word in the input text string
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`irrespective of the type of information that is within the text string.
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`The Person reference does not make up for the deficiencies of the Tso reference.
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`The Person reference describes a fianctionality in Microsoft Word 97 known as Mail
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`Merge. Mail Merge allows a user to create multiple letters “by merging together a list of
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`names and addresses with letters, envelopes, or address labels.” Person, page 485. The
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`method starts when the user selects a main document and inserts merge fields into the
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`document for specifying the placement of merged information. The merge fields also
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`specify a particular data field that is to replace them: “First_Name”, “Last_Name”, and
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`“Company_Name.” See Person, Fig. 17.30; Person, page 485. Next, the user selects a list
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`of contacts that includes data fields for name and address information. Person, page 488.
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`When the user selects the “merge” button, the name and address information from the list
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`of contacts is retrieved and inserted into the main document according to the merge
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`fields. Person, page 492, 507.
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`The Person reference also does not disclose or suggest item (1) above, analyzing
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`first information from the document to determine if thefirst information is at least one of
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`a plurality of types of information that can be searched for in order to find second
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`information related to the first information, as required by the claims. Instead, as
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`explained above, the Person reference merely discloses inserting data retrieved from a list
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`of contacts en masse into merge fields within the document. Person fails to disclose or
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`suggest analyzing first information in the document, as required by the claims, because
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`Person requires the merge fields in the document to already have been specified by the
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`user as merge fields and as related to a specific data fields in the list of contacts (e. g,
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`“First_Name”, “Last_Name”, and “Company_Name”). Thus, there is no need to analyze
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`text to determine its type.
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`Additionally, Person fails to disclose or suggest a search for first information, as
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`required by item (2) above, because the information to be inserted by mail merger is
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`never searched for in the information source. Rather, the records specified by the user
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`(i.e., every contact from the contact list) are retrieved and used for insertion into the main
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`document. Since there is no search, as required by the claims, Person also cannot
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`determine if the first information is of a type that can be searched, as filrther required by
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`item (1) above. Accordingly, neither the Tso reference nor the Person reference discloses
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`or suggests analyzing first information from the document to determine if the first
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`information is of a type of information that can be searched for in order to find second
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`information related to the first information, as required by claim 1. And, for this reason,
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`among others, the claims are patentable over the combination of the Tso and Person
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`references.
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`Independent claim 18 requires limitations that are similar to claim 1 and,
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`therefore, claim 18 is patentable over the cited prior art for similar reasons. The
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`dependent claims are also allowable for similar reasons.
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`The presently amended claims also distinguish the Miller reference (US. 5,946,
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`647), Which has been used in a rejection against the claims in Application Serial No.
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`12/841,302 (also before the Examiner). Miller discloses a method for detecting data in a
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`document and performing a particular action on the detected data.