DETAILED ACTION
Status of the Application
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-7 and 15-22 are pending.
Response to Amendment
35 U.S.C. 101 rejection has been maintained.
Priority
The present application claims a Provisional Application 63/114,063, filed on November 16, 2020.
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 1-7 and 15-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Is the claim to a process, machine, manufacture or composition of matter? (MPEP 2106.03)
In the present application, claims 1-7 are directed to a system (i.e., a machine) and claims 15-20 are directed to a method (i.e., a process). Thus, the eligibility analysis proceeds to Step 2A. prong one.
Step 2A. prong one: Does the claim recite an abstract idea, law of nature, or natural phenomenon? (MPEP 2106.04)
The abstract idea recited in claim 1 is
for a case, receiving case details comprising (1) names of parties to the case; (2) names of law firms linked to each party; (3) a name of a judge assigned to the case; and (4) a nature of the suit for the case;
generating a plurality of classifications of the case details, comprising:
classifying, names of the parties, each party by party type;
classifying each party by corporation size when the party is a corporation;
classifying the names of the law firms, each law firm by size; and
obtaining a personal profile of the judge;
recalling numeric values linked to the plurality of classifications, wherein the plurality of classifications comprises (a) party type, (b) corporation size if any, (c) law firm size, (d) the nature of the suit, (e) type of legal filing, and (f) the personal profile of the judge;
recalling prior numeric values linked to a decision history of the judge in relation to a legal filing being considered for the case;
converting each classification of the plurality of classifications to the relevant numeric value linked to the classification to create a new entry;
creating a vector using the new entry and the prior numeric values;
solving the vector using a gradient boosted trees classifier to determine a likelihood that the judge will grant the legal filing; and
transmitting the likelihood for display to a user.
The abstract idea recited in claim 15 is
for a case, receiving case details comprising (1) names of parties to the case; (2) names of law firms linked to each party; (3) a name of a judge assigned to the case; and (4) a nature of the suit for the case;
generating a plurality of classifications of the case details, comprising:
classifying, the names of the parties, each party as a corporation, individual, union, government, or other;
classifying each party by corporation size when the party is a corporation;
classifying each law firm as a solo, small firm, medium firm, large firm, or Am 100 firm; and
obtaining a personal profile of the judge;
calling up numeric values linked to the plurality of classifications, wherein the plurality of classifications comprises (a) party type, (b) corporation size if any, (c) law firm size, (d) the nature of the suit, (e) type of legal filing, and (f) the personal profile of the judge;
calling up prior numeric values linked to a decision history of the judge in relation to a legal filing being considered for the case;
converting each classification of the plurality of classifications to the relevant numeric value linked to the classification to create a new entry;
creating a vector using the new entry and the prior numeric values;
solving the vector using a gradient boosted trees classifier to determine a likelihood that the judge will grant the legal filing; and
transmitting the likelihood that the judge will grant the legal filing for display to a user.
The claimed invention is directed to an abstract idea of analyzing and providing likelihood of legal filing outcome.
The claims recite an abstract idea in the forms of business or law firm providing services to their client for a predictability of legal outcome to develop litigation strategies. This is supported by para. [0002] and [0009] of the applicant’s specification. This falls under the category of “Certain Method of Organizing Human Activities - commercial or legal interactions, which includes legal obligations and business relations in forms of determining likelihood of judge granting legal filing for the client to develop litigation strategies. That is, human paralegal, clerk, or attorney of a law firm have been responsible for gathering, compiling, and analyzing information concerning courts and related processes to predict the outcome of certain legal filings, before computers were available to support these tasks because legal industry has existed longer than computers. Because the limitations above closely follow the steps standard in commercial interaction and legal interaction, the claims recite an abstract idea consistent with the “certain methods of organizing human activity” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(II).
Additionally and alternatively, the examiner further finds that the claims are directed to a mental process. Under the broadest reasonable interpretation, the above-mentioned limitations recite a method of evaluating a likelihood that the judge will grant a legal filling based on prior history. These steps can be performed mentally and/or by hand, that fall within the category of “Mental Processes” - concepts performed in the human mind including observation, evaluation, judgement, and judgement. For example, a person could recall (i.e., observation, evaluation and judgement) information related to numeric values linked to the plurality of classifications and prior numeric values linked to a decision history of the judge in relation to a legal filing being considered for the case; convert (i.e., evaluation) each classification of the plurality of classifications to the relevant numeric value linked to the classification to create a new entry; create (e.g., evaluation) a vector using the new entry and the prior numeric values; solve (i.e., evaluation) the vector using a gradient boosted trees classifier to determine a likelihood that the judge will grant the legal filing; and present the likelihood information to the user. Because the limitations above closely follow the steps of collecting information, analyzing the collected information, and presenting information, and the steps involved human judgements, observations, and evaluations that can be practically or reasonably performed in the human mind, the claims recite an abstract idea consistent with the “mental processes” grouping of the abstract ideas, set forth in MPEP 2106.04(a)(2)(III).
Additionally and alternatively, the examiner further finds that the claims involving the determination of likelihood (i.e., probability calculation) that the judge will grant the legal filing to be directed to “Mathematical Concept” category of the abstract ideas. Under the broadest reasonable interpretation, the steps of converting each classification of the plurality of classifications to the relevant numeric value linked to the classification to create a new entry; creating a vector using the new entry and the prior numeric values; solving the vector using a gradient boosted trees classifier to determine a likelihood that the judge will grant the legal filing amount to forms of performing mathematical calculations, which falls under “Mathematical Concept” of the abstract idea, set forth in MPEP 2106.04(a)(2)(I).
Accordingly, the above-mentioned limitations are considered as a single abstract idea, therefore, the claims recite an abstract idea and the analysis proceeds to Step 2A. prong two.
Step 2A. prong two: Does the claim recite additional elements that integrate the judicial exception into a practical application? (MPEP 2106.04)
This judicial exception is not integrated into a practical application because the additional elements merely add instructions to apply the abstract idea to a computer.
The additional elements considered include:
Claim 1: a system comprising: one or more processors; and memory storing software to control the one or more processors to perform functions comprising: using natural language processing as applied to; recalling, from a database; to a software application.
Claim 15: no additional element recited in the claim.
The additional element of a system comprising generic computer elements are found to recite mere instructions to apply a generic computer and technology to execute the method in the recited claim limitations, as merely using a computer to transmit, manipulate, and display information is not an improvement to a technology or technical field. The additional elements merely recite computer elements to receive, generate, classify, recall, call, create, determine, and transmit information. The additional element is recited at a high-level of generality and amount to no more than mere instructions to apply the exception using generic computer components, i.e., these generic computing elements are merely being used to perform the tasks of the abstract idea, see MPEP 2106.05(f). There is no indication from the specification that the computer elements are anything but generic hardware and/or software, and the combination of elements is simply a generic computing system (See Applicant’s Specification at least at paragraphs [0080]-[0083] describes general-purpose processor, ram, and memory for executing software application; paragraphs [0087]-[0088] describes the generic computer components of storage device for storing data file and software; para. [0093]-[0099] describes the software operation by processor to perform functions and storing via network). That is, the functions of above-mentioned limitations are steps of adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea as discussed in MPEP 2106.05(f). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer.
Accordingly, alone and in combination, these additional element(s) do not integrate the abstract idea into a practical application. Therefore, the claims are directed to an abstract idea and the analysis proceeds to Step 2B.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? (MPEP 2106.05)
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements and analysis of Step2A-Prong two is carried over. For the same reason, these elements are not sufficient to provide an inventive concept. Applicant has merely recited elements that instruct the user to apply the abstract idea to a computer or other machinery. When considered individually and in combination the conclusion, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer to perform the above-mentioned limitations amount to no more than mere instructions to apply the function of the limitations to the exception using generic computer component, as discussed in MPEP 2106.05(f). The claim as a whole merely describes how to generally “apply” the concept for analyzing and providing likelihood of legal filing outcome. Thus, viewed as a whole, nothing in the claim adds significantly more (i.e., an inventive concept) to the abstract idea. For these reasons there is no inventive concept in the claims and thus are ineligible.
As for dependent claims 2 and 16, these claims recite limitations that further define the abstract idea noted in claims 1 and 15. The claims recite the use of same additional element of computer system, at a high level of generality (i.e., as a generic computer system performing generic computer functions of determining, transmitting, and displaying information) such that it amounts no more than mere instructions to apply the exception using a generic computer component, see MPEP 2106.05(f). Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
As for dependent claims 3-7 and 17-20, these claims recite limitations that further define the abstract idea noted in claims 1 and 15. The claims further recite additional descriptive information regarding to the party type, corporation size, law firm size, and nature of suit, which the additional information do not change abstract idea of the independent claim. The further descriptive details of the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technology environment. The claims are ineligible.
As for dependent claims 21 and 22, these claims recite limitations that further define the abstract idea noted in claim 1. The claims further recite operating software application on a mobile device, which is recited at a high level of generality (i.e., as a generic computer system performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component, see MPEP 2106.05(f). Even in combination, the additional element does not integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
In summary, the dependent claims considered both individually and as ordered combination do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. The claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment. Therefore, the claims are rejected under 35 U.S.C. 101.
Response to Remarks
35 U.S.C. 101 Rejections:
The Applicant’s remarks are fully considered, however, it is found to be unpersuasive.
The Applicant argues that the pending claims are patent eligible under the logic of Recentive Analytics, while the Applicant admits the pending claims are not analogous to the claims in Recentive Analytics, and still asserts the claims “delineate steps” though which a specific machine learning technology (gradient boosted trees) achieves an improvement. Recentive Analytics is found eligible because CAFC found the system provided a technical solution to a technical problem. The Recentive Analytics patent claimed a specific method of using a data structure to iteratively train machine learning model then generate and compare schedules to find an optimal solution that human schedulers could not achieve using traditional method. The presented claims do not reflect technological improvement. The problem described in the remarks is regarding to overfitting in machine learning which is a statistical symptom. The solution recited in the claims do not reflect an improvement to the gradient boosted trees algorithm itself, overfitting, or computer functionality, but the use and selection of specific data inputs such as party type, law firm size, nature of the suit, type of legal filing, and judge profile. The gradient boosted trees classifier is merely used as a tool to process the specific legal data for the abstract idea of prediction for legal outcome within a particular technological environment. The Federal Circuit has held that “information as such is intangible” and that “collecting, analyzing, and displaying information, even with a particular focus, remains an abstract idea.” (Electric Power Group).
The remarks extensively argue around solving overfitting however, the claims do not mention overfitting at all or how it is solved. The remarks attempt to extend the specific “improvement” in the gradient boosted trees classifier (algorithm) with overfitting issue, yet the claims do not reflect such improvement. If the “overfitting” is solved by the specific way the vector is created or by the specific categorical limitations, then the claim should demonstrate that it is restricted to those broader categorical values to the exclusion of over granular data. The claims only recite the use of gradient boosted trees classifier for the result-oriented function of determining a likelihood with the selection of data input (e.g., party type, law firm size, nature of the suit, type of legal filing, judge profile).
That is, the solution or improvement described by the Applicant is an improvement in the accuracy of prediction in legal field with the use of known mathematical algorithm of gradient boosted trees classifier for a business need improvement (App. specification para. [0008]-[0009], “thereby reducing the unnecessary legal spend of their clients”). This is not a technological improvement. The computer is not functioning better nor the mathematical algorithm of gradient boosted trees classifier is improved because the input of processing data of “law firm size” instead of “individual attorney names” are used. It is simply processing or evaluating of different data/information. An improvement in the content of the output does not qualify as an improvement to the functionality of the computer (See SAP America, Inc. V. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas).
The Examiner asserts the combination of the additional elements amount to nothing more than collecting data, applying a known mathematical algorithm and displaying the result. The court has held that “The abstract idea itself cannot supply the inventive concept, no matter how groundbreaking the advance.” IBG II, 921 F.3d at 1093 (internal quotation marks omitted where quoting SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1171 (Fed. Cir. 2018)); IBG III, 921 F.3d at 1385). The claims do not describe a technical shift in how gradient boosted trees operate or improved but only describes a specific data selection strategy for a legal industry use case for a predictable result. The “inventive” part of the claim is directed to the discovery or the use of certain legal data points in gradient boosted trees are more predictive than other, which the “inventive concept” resides in the abstract idea itself but not in the technical implementation. Therefore, the claims are directed to abstract idea and does not transform the nature of the claims into a patent-eligible application. The rejection under 35 U.S.C. 101 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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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/WENREN CHEN/Examiner, Art Unit 3626