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 Application
Claims 1-4, 8-14, and 18-20 are pending and examined here per Applicant’s 10/10/2025 filing. Claim 1-3 and 11-13 are amended. Claims 5-7 and 15-17 were previously canceled. No claims are withdrawn or newly added.
Response to Amendment
Applicant’s amendments do not overcome the rejections of the previous Office action.
Response to Arguments
Applicant's arguments filed with respect to the 35 USC 101 rejection of the previous Office Action have been fully considered but they are not persuasive. Applicant argues:
Applicant submits that independent claims 1 and 11 neither recite nor are directed to a process capable of being performed by a human mind. Remarks p. 10.
Respectfully, the Office disagrees with Applicant’s position. The claimed invention is claimed to a high level of generality thus a mental process. Where the MPEP provides, “the courts [do not] distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.” MPEP 2106.04(a)(2)(III).
The rejection of the previous Office action is maintained as updated below.
A human mind is incapable of changing the operation of another thinking machine through mental process alone. Page 11.
Respectfully, the Office disagrees with Applicant’s position. It is respectfully noted that the claimed invention it is not clear how the “thinking machine” is updated. The claimed invention is claimed to a high level of generality thus a mental process. Where the MPEP provides, “the courts [do not] distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.” MPEP 2106.04(a)(2)(III).
The rejection of the previous Office action is maintained as updated below.
Here, as in Enfish and McRo, currently amended independent claim 1 of the present application is not directed to a patent ineligible concept, because currently amended independent claim 1 includes the limitation “modify, based on the one or more parameters, one or more of stored weights or stored priorities of at of at least one of the trained tagging machine learning model communicatively coupled to the system or the trained tag review and correction machine learning model communicatively coupled to the system, to provide at least one of an improved tagging machine learning model or an improved tag review and correction machine learning model.” Remarks p. 13
Respectfully, the Office disagrees with Applicant’s position. It is respectfully noted that the claimed invention on requires “modify, based on the one or more parameters, one or more of stored weights or stored priorities of at of at least one of the trained tagging machine learning model communicatively coupled to the system or the trained tag review and correction machine learning model”. Only one model is updated at a high level of generality thus a mental process.
The rejection of the previous Office action is maintained as updated below.
By the same token as in USPTO example 39 amended independent claim 1 does not recite a judicial exception, because currently amended independent claim 1 does not claim or recite a mathematical algorithm, certain method of organizing human activity, or mental process. Remarks p. 14
Respectfully, the Office disagrees with Applicant’s position. USPTO’s example 39 is not analogous to the rejection of the instant Application. The explanation focuses on the “the claim does not recite any mathematical relationships, formulas, or calculations. While some of the limitations may be based on mathematical concepts, the mathematical concepts are not recited in the claims . . . the claim does not recite a mental process because the steps are not practically performed in the human mind.” Further the example does not provide an explanation why the claim cannot be preformed in the human mind.
The rejection of the previous Office action is maintained as updated below.
Any such recited judicial exception is integrated into a practical application, based on the aforementioned limitation of currently amended independent claim 1, which affirmatively recites: “ based on the one or more parameters, one or more of stored weights or stored priorities of at of at least one of the trained tagging machine learning model communicatively coupled to the system or the trained tag review and correction machine learning model communicatively coupled to the system, to provide at least one of an improved tagging machine learning model or an improved tag review and correction machine learning model.” Remarks p. 14-15.
Respectfully, the Office disagrees with Applicant’s position. The identified limitation is found to be an element of the abstract idea. MPEP 2106.04(d) provides, “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” It further provides, “The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application” MPEP 2106.04(d)(II).
In combination with the other elements of the claim the identified elements of the claimed invention does not imposes a meaningful limit on the judicial exception. The rejection of the previous Office action is maintained as updated below.
The use of an annotation evaluation ML model and correction assessment ML model that improves the efficiency and speed of identifying tagging errors and/or errors in corrections applied to tags introduces a technological improvement resulting in integration of the recited processing steps into a practical application, such as ongoing improvement to the tagging process and/or the Q/A review and correction process by modifying the trained tagging ML model and/or the trained tag review and correction ML model, in order to improve the efficiency, accuracy and consistency with which a large library of valuable content can be annotated. Remarks p. 17.
Respectfully, the Office disagrees with Applicant’s position. Any improvement to the speed of the process comes from the capabilities of the computer rather than the claimed invention.
The rejection of the previous Office action is maintained as updated below.
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 1-4, 8-14, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. mental processes) without practical application or significantly more when the elements are considered individually and as an ordered combination.
Step 1: Is the claimed invention to a process, machine, manufacture or composition of matter?
Yes, the claims fall within at least one of the four categories of patent eligible subject. Claims 1-4 and 8-10 are to system (machine) and claims 11-14 and 18-20 are to method (process).
Step 2A, prong 1: Does the claim recite an abstract idea, law or nature, or natural phenomenon?
Yes, the claims are found to recite an abstract idea. Specifically, the abstract idea of mental processes. Where mental processes relates to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 1 (as a representative claim) recites the following, where the limitations found to contain elements of the abstract idea are in bold italics:
Claim 1: A system comprising:
a computing platform including a hardware processor and a system memory storing a software code, an annotation evaluation machine learning model, and a correction assessment machine learning model;
the hardware processor configured to execute the software code to:
receive annotation data identifying a content, and a plurality of annotation tags applied to the content in a tagging process performed by a tagging entity;
receive one or more corrections to the plurality of annotation tags, the one or more corrections having been made in a correction process performed by a quality assurance (QA) entity, wherein at least one of (i) the tagging entity is a trained tagging machine learning model communicatively coupled to the system via a communication network, or (ii) the QA entity is a trained tag review and correction machine learning model communicatively coupled to the system via the communication network;
perform, using the annotation evaluation machine learning model and the annotation data, an automated evaluation of the tagging process based on the plurality of annotation tags and the one or more corrections to the plurality of annotation tags;
perform, using the correction assessment machine learning model the automated evaluation of the tagging process and the annotation data, based at least in part on how many corrections are included among the one or more corrections to the plurality of annotation tags;
identify, based on at least one of the automated evaluation of the tagging process or the automated assessment of the correction process, one or more parameters for improving at least one of the tagging process or the correction process; and
modify, based on the one or more parameters, one or more of stored weights or stored priorities of at least one of the trained tagging machine learning model communicatively coupled to the system or the trained tag review and correction machine learning model communicatively coupled to the system to provide at least one of an improved tagging machine learning model or an improved tag review and correction machine learning model.
The claims are determined to be identify content and verifying the identification of the content. Where content in the context of the claim could be anything including pictures on a paper document. The process is to the evaluation (mental step) of tags applied to annotate content. The recited machine learning is only nominally recited the cited abstract elements of the claim can be performed in the mind of a human. That is to say under the broadest reasonable interpretation of the claim a user with assistance of the processor as tool can using his mind evaluate the tagging of content and the correctness of that process as well as identify improvements to the tagging process and adjust the stored weights/priories or trained tag.
See “The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand.") . . . Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015).” MPEP 2106.04(a)(2).
The Office finds the amended improvement step is a step of “apply it”. Where "apply it" (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do "‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’". Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on "the draftsman’s art").
It is noted that the amendments made to the claim are at a high level of generality. Where it is not clear HOW the machine learning model is being by modifying or substituting. Where the results of the decision are fed back to the model to make it smarter and allow it to make better decisions in the future. The improvement in the retraining (modification/substitution) comes from the modification of the existing parameters (models) to give healthier and up-to-date future outputs – the system is made smarter. Thus one way to show that the model will make better decisions in the future (e.g. statutory) is to expressly include HOW the existing parameters are adapted/changed to the new data; in contrast the mere retraining without showing that the parameters or variables used in the model are learning or changing does not show a technical improvement to the process. Applicant’s amendments tell what but not how.
Step 2A, prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No, the claimed invention does not recite additional elements that integrate the abstract idea into a practical application. Where a practical application is described as integrating the abstract idea by applying it, relying on it, or using the abstract idea in a manner that imposes a meaningful limit on it such that the claim is more than a drafting effort designed to monopolize it, see October 2019: Subject Matter Eligibility at p. 11.
The identified judicial exception is not integrated into a practical application. In particular, the claims recites the additional limitations see non-bold-italicized elements above. The additional elements in the claim are found to be to the “receiv[ing]” step, which is found to be insignificant extra solution active (pre-solution activity), while the “output[ting]” is post-solution activity.
Where 2106.05(g) MPEP states, “term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent.”
Step 2B: Does the claim recite additional elements that amount to significantly more than the abstract idea?
No, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, when the limitation were considered individually and as part of the ordered combination. As stated above the additional components of the claimed invention are found to be insignificant extra solution active (pre/post-solution activity). Additionally, the elements are found to be well-understood, routine, conventional activity of the computing system.
Where 2106.05(d)(I)(2) of the MPEP states, “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018). However, this does not mean that a prior art search is necessary to resolve this inquiry. Instead, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine, conventional activity in the relevant field when making the required determination. For example, in many instances, the specification of the application may indicate that additional elements are well-known or conventional. See, e.g., Intellectual Ventures v. Symantec, 838 F.3d at 1317; 120 USPQ2d at 1359 ("The written description is particularly useful in determining what is well-known or conventional"); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (relying on specification’s description of additional elements as "well-known", "common" and "conventional"); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (Specification described additional elements as "either performing basic computer functions such as sending and receiving data, or performing functions ‘known’ in the art.").”
The system also claims a computing platform inclusive of a hardware processor and memory that are found to be generic computing components rather than those of a particular machine, see instant specification at p. 6, lines 3-14.
These limitations do NOT offer an improvement to another technology or technical field; improvements to the functioning of the computer itself; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add a specific limitation other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Therefore, these additional limitations when considered individually or in combination do not provide an inventive concept that can transform the abstract idea into patent eligible subject matter.
The other independent claims recite similar limitations and are rejected for the same reasoning given above.
The dependent claims do not further limit the claimed invention in such a way as to direct the claimed invention to statutory subject matter.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Priel et al (US 2020/0005170 A1) teaches forming a list by tagging words and/or strings within the data item according to predefined attributes such that the list includes the words and/or strings with their corresponding attributes; forming sequence items relating to the list according to a predefined criterion such that each sequence item includes at least the list and optionally additional preformed lists that have been formed in the same manner as the list and that have a shared concept with the list according to the predefined criterion; running each of the sequence items in a preformed machine learning classifying model that outputs a determination if there is an occurrence of the online event or not.
Laughton et al (US 12,432,277 B2) teaches automatically tagging at least the portion of the first plurality of data points includes executing a machine learning model trained using historical information on the context data to generate at least one of the one or more first tags. In some embodiments, identifying the at least one of the first plurality of data points includes retrieving descriptive data describing an entity and analyzing the descriptive data to extract semantic information from the descriptive data describing one or more attributes of the entity.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/FOLASHADE ANDERSON/Primary Examiner, Art Unit 3623