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 .
Response to Amendment
The amendment filed 04/02/26 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
“[3] the computer using the user input to draft the at least one claim of the patent application, wherein the at least one claim of the patent application comprises a claim originally created by the system; and
[4] displaying, simultaneously on the image display, (1) a user prompt of the at least one user prompt and (2) the at least one claim of the patent application that”
The examiner has reviewed the cited paragraphs for support, [0049]-[0050], [0242], [0244]-[0245] and other paragraphs and figures but could not find support for the term “a claim originally created by the system” and “displaying, simultaneously on the image display, (1) and (2)….”
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Status
Claims 1-2, 5, 7, 9-11, 15-17, 20, and 23-37 are pending. They comprise of 2 groups:
(1) System1: 1-2, 5, 7, 9-11, 15, 27, and 31-32, and
(2) Method1: 16-17, 20, 23-30 and 33-37.
Claims canceled: 3-4, 6, 8, 12-14, 18-19, and 21-22.
As of 04/02/2026, independent claim 1 is as followed:
(Currently Amended) A system comprising:
[I] a computer; and
[II] a user interface in communication with the computer;
the user interface comprising an image display and at least one input device configured to permit a user to communicate with the computer;
the system configured to perform a method comprising:
[1] prompting the user to provide user input by displaying at least one user prompt on the image display, wherein the prompting comprises prompting the user to provide at least two elements of an invention of a patent application by displaying the at least one user prompt, the at least one user prompt comprising:
(1) a prompt with at least one blank identifying a location where the user is prompted to input at least one element of a machine, an article of manufacture, a composition, or a method, and
(2) a prompt for the user to input at least one characteristic of the at least one element, and
wherein the prompting comprises prompting the user to provide the user input in a format that can be converted into at least one claim of the patent application without any further user input;
[2] the computer receiving the user input from the user via the user interface; and
[3] the computer using the user input to draft the at least one claim of the patent application, wherein the at least one claim of the patent application comprises a claim originally created by the system; and
[4] displaying, simultaneously on the image display, (1) a user prompt of the at least one user prompt and (2) the at least one claim of the patent application that comprises the user input, to enable the user to provide or adjust the user input to the system in response to the at least one user prompt.
Note: for referential purpose, numerals [1]-[4] are added to the beginning of each element.
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 1-2, 5, 7, 9-11, 15-17, 20, and 23-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e.,
(1) process,
(2) machine,
(3) manufacture or product, or
(4) composition of matter.
If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception, i.e.,
(1) law of nature,
(2) natural phenomenon, and
(3) abstract idea.
and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include:
(i) a method of organizing human activities,
(2i) an idea of itself, or
(3i) a mathematical relationship or formula.
In details:
(1) Certain method of organizing human activities --
(i) fundamental economic principles or practices (including hedging, insurance, mitigating risk);
(ii) commercial or legal interactions (including agreements in the form of contracts; Legal obligations; Advertising, marketing or sales activities or behaviors; business relations);
(iii) managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
(2) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, and opinion).
(3) Mathematical concepts -- mathematical relationships, mathematical formulas or equations, and mathematical calculations;
For instance, in Alice Corp. (Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)), the Court found that “intermediated settlement” was a fundamental economic practice, which is considered as (i) a certain method of organizing human activities, which is an abstract idea.
Step 1:
In the instant case, with respect to claims 1-2, 5, 7, 9-11, 15-17, 20, and 23-37:
Claim category:
Method: 16 -17, 20, 23-26, 28-30 and 33-37, and
Apparatus: 1-2, 5, 7, 9-11, 15, 27 and 31-32.
Analysis:
Method: claims 16-17, 20, 23-26, 28-30, and 33-37 are directed to a computer-implemented method for method for drafting at least a portion of a patent application and displaying a claim on an image display (screen). (Step 1:Yes).
Apparatus: claims 1-2, 5, 7, 9-11, 15, 27 and 31-32 are directed to an apparatus comprising a system comprising a computer and interface and display for drafting at least a portion of a patent application and displaying a claim on an image display (screen). (Step 1:Yes).
Thus, the claims are generally directed towards one of the four statutory categories under 35 USC § 101.
Step 2A,
(1) Prong One: Does the claim recite a judicial exception?
(2) Prong Two: Are there any additional elements that integrate the judicial exception into a practical application?
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, then proceeds to step 2B.
Step 2B: Are there any additional elements that adds an inventive concept to the claim? Determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
A. Step 2A Prong One:
Claims 1-2, 5, 7, 9-11, 15-17, 20, and 23-37 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong 1: Claim 1, as exemplary, recites a method of drafting at least a portion of a patent application and displaying a claim on an image display (screen), comprising the steps of inputting information into a patent application on an interface for generating a claim in a patent application and displaying a claim on an image display (screen), is a certain method of organizing human activities, such as legal interactions or business activities such as drafting a patent application, which is an abstract idea. Further, none of the limitations recite technological implementation details for any of the steps but, instead, only recite broad functional language being performed by the use of at least one processor.
(ii) commercial or legal interactions (including agreements in the form of contracts; Legal obligations; Advertising, marketing or sales activities or behaviors; business relations);
B. Step 2A, Prong Two:
The judicial exception is not integrated into a practical applications because independent method claim 16 deals with a method for drafting at least a portion of a patent application and displaying a claim on an image display (screen), by carrying out steps of:
Independent method claim 16 and system claim 1 recites the additional elements of:
Steps: Types
[1] prompting the user to provide input (data) Data gathering, insignificant extra-solution activity (IE-SA)
[2] receiving user input (data) Data gathering, IE-SA.
[3] using the input (data) to draft… Business activity/legal interaction in a form.
* input: invention information (data).
[4] displaying on a screen, a claim (data). Data displaying, IE-SA.
Steps [1], [2], and [4] are data gathering and data displaying which are considered as insignificant extra-solution activity steps.
Step [3] is well known business activity or legal interaction in filling a form or patent application.
Note that the claims contain numerous “intended use” verb such as “prompting the user to provide…,” “to draft the at least one claim…,” and “to enable the user to provide or adjust the user input…”
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer devices or modules or software, i.e. processor with a software application thereon, filling out a patent application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea for drafting at least a portion of a patent application and displaying a claim on an image display (screen), comprising the steps of inputting information into a patent application on an interface for generating a claim in a patent application and displaying a claim on an image display (screen), which does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
In particular, the claim limits of “[I] an interface comprising an image display and at least one input device configured to permit a user to communicate with the computer,” are claimed and described at high level of generality and are functions any general purpose computer performs such that it amounts no more than mere instruction to apply the exception to a particular technological environment.
The computer in all the steps is recited a high-level of generality (i.e. as a generic device performing generic computer functions of: receiving information/data about patent application, and displaying a claim on an image display (screen), comprising the steps of inputting information into a patent application on an interface for generating a claim in a patent application and displaying a claim on an image display (screen), etc., such that it amounts to no more than mere instructions to apply the exception using a generic computer component The combination of these additional elements is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea (e.g., a fundamental economic practice or well known business activity or legal interaction in filling a form or patent application) and does not integrate a judicial exception into a practical application. See MPEP 2106.05(f). Therefore, the additional elements of the independent claims, when considered both individually and in combination, are not sufficient to prove integration into a practical application.
C. Step 2B:
The claims recites the additional elements of steps [1]-[4] above.
Steps [1], [2], and [4] are data gathering and data displaying which are considered as insignificant extra-solution activity steps.
Step [3] is well known business activity or legal interaction in filling a form or patent application.
Note that the claims contain numerous “intended use” verb such as “prompting the user to provide…,” “to draft the at least one claim…,” and “to enable the user to provide or adjust the user input…”
The claim does not result in an improvement to the functioning of the computer system or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer devices or modules or software, i.e. processor with a software application thereon, filling out a patent application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea for drafting at least a portion of a patent application such as a claim and displaying the claim on an image display, which does not integrate a judicial exception into a practical application. See MPEP 2106.05(f).
In particular, the claim limits of “[I] an interface comprising an image display and at least one input device configured to permit a user to communicate with the computer,” are claimed and described at high level of generality and are functions any general purpose computer performs such that it amounts no more than mere instruction to apply the exception to a particular technological environment.
The computer in all the steps is recited a high-level of generality (i.e. as a generic device performing generic computer functions of: receiving information/data about patent application, and displaying a claim on an image display (screen), etc., such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The combination of these additional elements is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea (e.g., a fundamental economic practice or well known business activity or legal interaction in filling a form or patent application) and does not integrate a judicial exception into a practical application. See MPEP 2106.05(f). Therefore, the additional elements of the independent claims, when considered both individually and in combination, are not sufficient to prove integration into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above, the additional elements, steps [1]-[4], when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea(s). As for the system or method claims, mere instructions to apply an exertion using generic computer components cannot provide an inventive concept. These generic computer components, i.e. a processor, a memory to store a set of instructions. The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer network devices, i.e. a software for carrying out a method for drafting at least a portion of a patent application and displaying the claim on an image display, which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use and further see insignificant extra-solution activity MPEP 2106.05 (f), (g) and (h). The Symantec, TLI, and OIP Techs, court decisions cited in MPEP 2106.05(d)(II) indicate that mere receipt or transmission of data over a network, sorting data, analyzing data, and transmitting the data is a well-understood, routine and conventional function when it is claimed in a merely generic manner (as it is here). The claim are basically collect data, analyze data, and provide set of results, which are not patent eligible, see Electric Power Group, LLC. For these reasons, there is no inventive concept in the claim, and thus the claim is not patent eligible.
As for dep. claims 27 and 2 (part of 1 above), which deals with further details of the filing and/or drafting activity of involved third party, these further limit the abstract idea of the filing procedure/step, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 27 and 2 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claim 5 (part of 1 above), which deal with further details of the drafting activities of involved party, these further limit the abstract idea of the filing procedure/step, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claim 5 is not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 7, 11, and 15 (part of 1 above), which deal with further details of computer system, the interface connection features, these further limit the abstract idea of the filing procedure/steps using generic computer and connection, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 7, 11 and 15 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 9-10 (part of 1 above), which deal with further details of the drafting activities of involved party, these further limit the abstract idea of the filing procedure/step, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 9-10 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
As for dep. claims 31-32 (part of 1 above), which deal with further details of a prompt for the user to specify related articles and reviews, these further limit the abstract idea of the invention review or related art or technology, without including: (a) an improvement to another technology or technical field, (b) an improvement to the functioning of the computer itself, or (c ) meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, claims 31-32 are not considered as being “significantly more”, and thus does not facilitate the claim to meet the “inventive concept”.
Therefore, claims 1-2, 5, 7, 9-11, 15-17, 20, and 23-26, 28-37 are not drawn to eligible subject matter as they are directed to an abstract idea without significantly more. step 2B: NO
Claim Rejections - 35 USC § 103
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, 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(a) 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.
On October 10, 2007, the Patent Office issued the "Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 in View of the Supreme Court Decision in KSR International Co. v. Teleflex Inc.," 73 Fed. Reg. 57,526 (2007) (hereinafter the Examination Guidelines). Section III is entitled "Rationales to support rejections under 35 U.S.C. 103." Within this section is the following quote from the Supreme Court: "rejections on obviousness grounds cannot be sustained by merely conclusory statements; instead there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Under the Examination Guidelines, the following is a list of rationales that may be used to support a finding of obviousness under 35 U.S.C. § 103:
(a) combining prior art elements according to known methods to yield predictable results;
(b) simple substitution of one known element for another to obtain predictable results;
(c) Use of known technique to improve similar devices (methods, or products) in the same way;
(d) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(e) "Obvious to try" choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(f) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations would have been predictable to one of ordinary skill in the art; and
(g) Some teaching, suggestion, or motivation (TSM) in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Each rationale is resolved using the Graham factual inquiries.
Claims 1, and 31-32 (system1) and respective 16, and 33-37 (method) are rejected under 35 U.S.C. 103(a) as obvious over:
Names Publications:
(1) YOO US 2021/0.182.486.
As for independent claims 1 (system), and respective 16 (method), YOO discloses a system comprising:
[I] a computer; and
[II] a user interface in communication with the computer;
the user interface comprising an image display and at least one input device configured to permit a user to communicate with the computer;
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[1] prompting the user to provide user input by displaying at least one user prompt on the image display, wherein the prompting comprises prompting the user to provide at least two elements of an invention of a patent application by displaying the at least one user prompt, the at least one user prompt comprising:
{see Fig. 10, see the prompt is the “blank space +” with the request of (1201) “please enter the title of the invention.”, 1228 “Please input the technical field,”}
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(1) a prompt with at least one blank identifying a location where the user is prompted to input at least one element of a machine, an article of manufacture, a composition, or a method, and
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(2) a prompt for the user to input at least one characteristic of the at least one element, and
wherein the prompting comprises prompting the user to provide the user input in a format that can be converted into at least one claim of the patent application without any further user input;
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[2] the computer receiving the user input from the user via the user interface; and
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[3] the computer using the user input to draft the at least one claim of the patent application, wherein the at least one claim of the patent application comprises a claim originally created by the system; and
{see Fig. 14, 1510, “please select a quoted claim” wherein the quoted claim is originally created by the system.}
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[4] displaying, simultaneously on the image display, (1) a user prompt of the at least one user prompt and (2) the at least one claim of the patent application that comprises the user input, to enable the user to provide or adjust the user input to the system in response to the at least one user prompt.
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YOO fairly teaches the claimed invention except for explicitly discloses on a blank a type of invention such as a machine, however, in view of the teaching of the “technical field”, “claim type,” etc., on Fig. 10, Fig. 12, the selection of a type of claim such as machine, or method, would have been obvious to a skilled artisan as mere filling out the application requirement.
Regarding claim 31 (part of 1) and respective claim 33 (part of 16), this is taught in YOO Fig. 10, 1204 “Please input a prior art document.” The selection of other types of document/articles such as indefinite article would have been obvious to a skilled artisan.
Regarding claim 32 (part of 1) and respective claim 36 (part of 16), which deals with a prompt for the user to provide at least one patent professional review or assistance, this is taught in YOO Fig. 10, 1204 “Please input a prior art document” which normally provides a review or document similar to the claimed invention which can serve a professional review or assistance to the claimed invention. The prior art can read over the claimed invention or being obvious to the claimed invention.
Regarding claim 34 (part of 16), which deals with a prompt for the user to further specify partial information, this is taught in YOO, Fig. 10, 1205 “Please input the problems to be solved,” 1202 “Please input the technical field.”
Regarding claim 35 (part of 16), which deals with displaying a prompt for the user to make a selection in a claim, this is taught in YOO Fig. 12, “Claims”, Fig. 13, “Claims Drafter”, “Add”, “Insert”, Fig. 14, 1530 “Select a quoted claim.”, 1570 “Select claim.” The selection of any other types of claims would have been obvious to a skilled artisan.
Regarding claim 37 (part of 16), which deals with providing a link to navigate the user to data for review or assistance, the use of a link for external provision is taught in YOO Fig. 28, 2440 “Link 1”, ‘Link 2”, and Fig. 34 “Link 1”, and respective [0707 reference 2740 is an external link provision UI” for searching relevant information or data and for translation purpose. The use of provided link for obtaining data from review or assistance would have been if accessing to external review is desired.
Claim(s) 27, 2, 5, 7, 9-11 and 15, 28, 17, 20, 23-26 and 29-30 are rejected under 35 U.S.C. 103 as being unpatentable over as applied to independent claims 1 and 16 above in view of YOO and further in view of (2) VAN LUCHENE ET AL., US 2007/0.220.041, and (3) PETROW ET AL., US 2014/0.025.590.
Regarding claim 27 (part of claim 1 above) and respective claim 28 (part of claim 16 above), VAN LUCHENE ET AL. discloses in [0927] that the system could notify authorized and/or interested parties 3rd party about the status of the application.
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Therefore, it would have been obvious to a person having ordinary skill in the art (PHOSITA) before the effective filing date of the claimed invention to modify drafting application of YOO to include a feature for a third-party indication of notification as taught by VAN LUCHENE ET AL. for notification of interest in the patent application, see [0097]. VAN LUCHENE ET AL. does not explicitly disclose that the interested party includes 3rd party.
In a similar patent application, PETROW ET AL. is cited to teach the interested party could include third party and communication such as alert to third party before publication of patent application, see [0012] and [0026].
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Therefore, it would have been obvious to a person having ordinary skill in the art (PHOSITA) before the effective filing date of the claimed invention to modify drafting application of DUGAN ET AL. / VAN LUCHENE ET AL. to include a third party indication as taught by PETROW ET AL for preparing pre-issuance submissions and other petition as taught in [0012] and [0029]. Alternatively, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Regarding claim 2 (part of claim 1 /27 above) and respective claim 17 (part of claim 16 /28 above), VAN LUCHENE ET AL. discloses in [0927] that the 3rd party could include potential licensees and not responsible for receiving a patent application or information relating patent application for a patent office or a government.
Regarding claim 5 (part of claim 1 /27 above) and respective claim 20 (part of claim 16 /28 above), which deals with well known application examination features between the central system (patent office) and applicant, i.e. identification of application errors by the office, edition and correction of errors by the applicant, inputting information and data as necessary to comply with the application requirements, this is taught in par. [0925]. The information submitted is analyzed automatically by the system (do not require artificial intelligence) to draft missing parts of the total patent application, see par. [0153].
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Any additions, edits or emissions from the user input used to create the portion of the application from the user input can be determined due to the format of the user prompt and the format of the user input that the user is prompted to provide (the system notifies (prompt) the end user that the drawings submitted have errors and omissions that need to be corrected, and the end user corrects the errors and omissions (format of the user input), see [0924]-[0925].
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Regarding claim 7 (part of claim 1/ 27 above) and respective claim 23 (part of claim 16 /28 above), which deals with a connection feature of the interface, being remotely located from the computer, this is taught in [0129 “the computer may communicate with the devices indirectly, via wireless medium (e.g. the Internet,…]’}.
Regarding dependent claim 9-10 (part of claim 1 /27 above) and respective dependent claim 29 (part of claim 16 /28 above), which deal with providing a remote patent professional entity access to the application and prompting the entity, this is taught in [0129 “the computer may communicate with the devices indirectly, via wireless medium (e.g. the Internet,…]’ and in [0163 … submitted the patent application to an attorney for further drafting.], and [0904-0905], which shows the attorney can further draft the patent application if needed.
Regarding claim 11 (part of claim 1 above) which deals with a connection feature of the interface via the Internet, this is taught in [0129 “the computer may communicate with the devices indirectly, via wireless medium (e.g. the Internet,…]’}.
Regarding claim 15 (part of claim 1 above) which deals with the computer features such as comprising a memory or non-transitory machine readable medium, this is taught in [0197 “computers, …programs, such as a program stored in a memory device…].
Regarding claim 24 (part of claim 16 above), which deals with a connection feature of the communication system, a provided patent professional entity located remotely from the interface, this is taught in [0129 “the computer may communicate with the devices indirectly, via wireless medium (e.g. the Internet,…] or [0163 … submitted the patent application to an attorney for further drafting.]}
Regarding claim 25 (part of claim 16 /28 above) and respective dependent claim 30 (part of claim 16 /29 above),, which deal with further works with the patent professional entity, this is taught in [0163 … submitted the patent application to an attorney for further drafting.], and [0904-0905].
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Regarding claim 26 (part of claim 16 /28 above), which deals with a system to file the application, this is taught in [0164 … submitted the patent application to the Patent Office for filing.].
Conclusion
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.
Response to Arguments
Applicant's amendment and arguments filed 08/08/25 have been fully considered and the results are as followed:
1) 112 (b) rejection: none.
2) 103 Rejection: applicant’s amendment and responses overcome the previous rejections, however, new references have been used to address the amended features.
3) 101 Rejection: (1) Applicant’s arguments on pages 10-13 that the system uses the prompts that prompts the user to provide user inputs and others are technological improvements over conventional practices for drafting patent application are not persuasive in view of the teachings of YOO, US 2021/0.182.486, which show the use of “prompts” are well-understood, routine and conventional.
(2) Applicant’s arguments on page 14 are not persuasive.
The computer in all the steps is recited a high-level of generality (i.e. as a generic device performing generic computer functions of: receiving information/data about patent application, and displaying a claim on an image display (screen), etc., such that it amounts to no more than mere instructions to apply the exception using a generic computer component. The combination of these additional elements is no more than mere instructions to apply the exception using a generic device. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea (e.g., a fundamental economic practice or well known business activity or legal interaction in filling a form or patent application) and does not integrate a judicial exception into a practical application. See MPEP 2106.05(f). Therefore, the additional elements of the independent claims, when considered both individually and in combination, are not sufficient to prove integration into a practical application.
(3) Applicant’s Declaration under 37 C.F.R. 1.132 has been reviewed and the improvements, computer-assisted patent application preparation, appear to be well known and taught in YOO, US 2021/0.0182.486.
Relevant Arts.
WO 2008/0127337 also teaches the alert indicator to third party of interest for communication of interest issues prior to publication. This is similar to the teaching of PETROW ET AL.
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No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tan "Dean" D NGUYEN whose telephone number is (571)272-6806. The examiner can normally be reached on M-F: 6:30-4:30 PM (ET).
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/TAN D NGUYEN/Primary Examiner, Art Unit 3689
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