DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 2, 2026 has been entered.
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 .
The amendment filed on March 2, 2026 has been entered. The following has occurred: Claims 1, 6, and 11 have been amended; Claims 14-17 and 20 were previously canceled.
Claims 1-13, 18, 19, and 21-25 are currently pending and have been examined.
Response to Amendment
35 U.S.C. 112 rejection has been added in light of the amendment.
35 U.S.C. 101 rejection has been maintained in light of the amendment.
Priority
The present application claims priority to Provisional Application 63/197,136, filed on June 4, 2021.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13, 18, 19, and 21-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, the examiner asserts that the Specification, as originally filled fails to disclose with enough specificity, the following limitations:
Claims 1, 6, and 11 recite “annotating, by the at least one processor, the electronic document to embed one or more annotations containing metadata about contents of the electronic document at one or more locations within the electronic document… and embedding the identified rule as an annotation within the electronic document” however, the specification does not provide support for the new matter. First, the word “embed” or “embedding” does not appear anywhere in the specification. That is, in para. [0041] states annotations added to the document, however, “added to” is much broader than embedded. For example, an annotation can be added to a document by storing it in the database linked to the document ID which is common in docketing system, but this does not mean altering the digital file of the document to “embed” the data within the file itself. Therefore, the claim function of “embedding” introduces a specific technical limitation regarding to file modification that is not described to the specification described as “added.” Further in para. [0042], the specification states “rules can specify how to fill in the templates and how to complete customer-specific procedures such as how to docket documents into the customer's docketing system 340, for example. The template can be filled out by pulling in attributes from the annotations in a document.” The specification does not the annotation is the rule but rather, explains the annotations contain attributes (date, names, IDs). The rules are stored in the Universal Procedures Database (UPDB) 330. The rules use the attributes found in the annotation, which contradicts the system for embedding the identified rules as an annotation. Second, the specification does not have support for “applying a machine learning model trained using a data warehouse of prior identified documents to analyze unstructured text included in the electronic document, wherein the machine learning model identifies, from the unstructured text, at least one rule for determining at least one expected docket item,” That is, the specification para. [0015] defines ““unstructured text” or “unstructured data” refers to data that is not organized in a standard format, for example, text in the body of an electronic communication.” And para. [0050] discusses the machine learning model is trained on past documents and provides predictions PTO IDs for the received document. The specification does not explicitly state the machine learning model identifies a “rule” directly from the “unstructured text” nor how that is actually performed. To clarify, in specification para. [0050] states the machine learning model predicts PTO IDs (document code). And para. [0042] states rules are stored and used from the Universal Procedures Database 330. A rule is a logical instruction not a data attribute (PTO ID). The claim limitation improperly conflates the data output of PTO IDs of the machine learning model with the rules and improperly indicates it is embedded as an annotation within the electronic document.
Claims 2-5, 7-10, 12, 13, 18, 19, and 21-23 depend from claims 1, 6, and 11 above and therefore inherit the 35 U.S.C. 112 deficiencies of their parent claim.
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 1-13, 18, 19, and 21-23 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 1-6 are directed to a method (i.e. a process), claims 7-10 are directed to a computer product (i.e. an article of manufacture), and claims 11-13, 18, 19, and 21-23 are directed to another 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)
While claims 1, 6, and 11, are directed to different categories, the language and scope are substantially the same and have been addressed together below.
The abstract idea recited in claims 1, 6, and 11, is
a method for identifying errors in entries in a docket kept by a docketing system, wherein the entries in the docketing system are created in response to documents representing official communications generated by a government authority, comprising:
obtaining a document;
annotating the document to embed one or more annotations containing metadata about contents of the document at one or more locations within the document, wherein annotating the document comprises applying a model to analyze unstructured text included in the document, wherein the model identifies, from the unstructured text, at least one rule for determining at least one expected docket item, and embedding the identified rule as an annotation within the document, wherein the annotation indicates the at least one rule for determining the at least one expected docket item;
extracting the one or more annotations from the document to complete a required docket item template according to the at least one rule for determining at least one expected docket item;
analyzing the annotations from the document and producing a docketing requirement based on the completed required docket item template, the docketing requirement comprising an entry to be made in the docket corresponding to the document;
obtaining a docketing report from the docketing system;
automatically determining if the docketing report includes the at least one expected docket item according to the docketing requirement;
in response to determining the docketing report does include the at least one expected docket item according to the docketing requirement, generating at least one discrepancy notation; and
automatically generating an error report identifying the at least one discrepancy notation.
(Broadest reasonable interpretation: “automatically” does not mean without human interaction. Examiner asserts a process may be automatic even though a human initiates or may interrupt to the process. The term “automatically” or “automated” can be construed to mean “once initiated by a human, the function is performed by a machine, without the need for manually performing the function.” Collegenet, Inc. v. Applyyourself, Inc. (CAFC, 04-1202,-1222,-1251, 8/2/2005).)
The claimed invention is directed to an abstract idea of reviewing and verifying the accuracy of administrative records by comparing expected data against actual data.
The bolded portions of limitations above recite concepts performable in the human mind including observation, evaluation, and judgement, which falls under “Mental Processes,” one of the abstract idea categories. Under the broadest reasonable interpretation, other than the additional elements of computer components of “a computer readable medium comprising a memory and a processor, the processor configured to”, “electronic” (which the additional elements are analyzed in steps 2A prong two and 2B), the claims 1, 6, and 11 recite processes that are all acts that could be performed by a human, e.g., mentally or manually, using a pen and paper, without the use of a computer or any other machine. For example, person, using pen and paper or via oral communication, could collect information (e.g., steps [B] and [F]), manipulate and analyze information (e.g., steps [C]-[E], [G]-[I]). Because the limitations above closely follow the steps of collecting, manipulating, analyzing, and displaying 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, the claims are directed to a human activity of reviewing documents for errors in the field of legal industry. For example, a clerk or attorney can obtain physical document, annotate the document, extract information from reading the document to determine a docketing requirement for an entry is to be made in the docket corresponding to the document; obtain a docketing report; determine (e.g., observation, evaluation, and judgement) if the docketing report includes an expected docket item according to the docketing requirement and generating a discrepancy notation if the docket item is not on the report as expected; wherein the docket item on the docketing report is generated by the electronic docketing system using a rule-based model, and further wherein the docket item specifies a requirement and a due date for the requirement, and generating an error report including an entry for any discrepancy notation. These are functions and steps that have been performed by human docketing clerk, which is described in the specification para. [0002], [0003], [0044], [0046], and [0047]. As suggested in the Applicant’s specification, human have been responsible for identifying, organizing, and docketing documents, before computers were available to support these tasks because legal industry has existed longer than computers. Since the limitations above closely follow the step standard in interaction between people in business and law firms (see app. specification para. [0002]), 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).
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 and insignificant extra-solution activity.
The additional elements considered include:
Claim 1: “electronic docketing system”; “electronic document”; “by the at least one processor, the electronic document to embed one or more annotations containing metadata about contents of the electronic document at one or more locations within the electronic document, wherein annotating the electronic document comprises applying a machine learning model trained using a data warehouse of prior identified documents” and “wherein the machine learning model identifies”;
Claim 6: “a non-transitory computer readable medium comprising a memory and a processor, the processor configured to”; “by at least one processor”; “electronic document”; “by the at least one processor, the electronic document to embed one or more annotations containing metadata about contents of the electronic document at one or more locations within the electronic document, wherein annotating the electronic document comprises applying a machine learning model trained using a data warehouse of prior identified documents”; and “wherein the machine learning model identifies”
Claim 11: “electronic docketing system”; “electronic document”; “at least one processor, the electronic document to embed one or more annotations containing metadata about contents of the electronic document at one or more locations within the electronic document, wherein annotating the electronic document comprises applying a machine learning model trained using a data warehouse of prior identified documents” and “the machine learning model identifies”;
In particular, the claim only recites the above-mentioned additional elements to obtain, annotate, embed, analyze, identify, provide, extract, produce, determine, and generate information. “Electronic” information being stored in a storage medium system. The computer components in the steps are recited at a high-level of generality (i.e., as generic computer components performing a generic computer function; See Applicant’s Specification at least at paragraphs [0052]-[0062] and Fig. 5 describing generic computer components; para. [0050] described the result-based function of training machine learning model) such that it amounts to no more than mere instructions to apply the exception using a generic computer component.
That is, the function of limitations [A]-[I] 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, even in combination, these additional element(s) do not integrate the abstract idea into a practical application because they do not improve a computer or other technology, do not transform a particular article, do not recite more than a general link to a computer, and do not invoke the computer in any meaningful way; the general computer is effectively part of the preamble instruction to “apply” the exception by the computer. 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 because the bold portions of the limitations recited above, were all considered to be an abstract idea in Step2A-Prong Two. 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 in [A]-[K] 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 reviewing and verifying the accuracy of administrative records. 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.
See below for court decisions reciting the similar steps of the claimed invention.
MPEP 2106.05(d)(II) - “The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity….
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); Similar to claimed limitations of obtaining and storing (i.e., downloading) electronic documents, rules, template and docketing reports.
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; Similar to claimed limitations of obtaining and storing (i.e., downloading) electronic documents, rules, template and docketing reports.
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition);” Similar to claimed limitations for identifying, pre-verifying, reading, and extracting information from the electronic documents.
MPEP 2106.05(a)(I) - “Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality:
iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017)” Similar recitation of claimed limitations for “automatically” function performed by computer processor.
As for dependent claims 2-5, 7-10, and 12-23, these claims recite limitations that further define the abstract idea noted in the independent claims 1, 6, and 11.
As for dependent claims 2, 4, 7, 9, and 12 further recite additional abstract steps of obtaining and storing (i.e. kept) in the computer system. Claims 3, 8, and 18 further recite additional abstract step of verifying and determining information on a computer system. Claims 5 and 10 further recite additional descriptive detail of the documents and rule. Claims 13, 19, and 22-23, generating and creating information using a computer system. Claims 24 and 25 further recite additional information for the completed required docket item template. The claims reciting the additional abstract steps and additional descriptive information do not change abstract idea of the independent claims. The abstract steps are 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. The dependent claims do not recite additional elements that integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea itself. The claims are ineligible.
Therefore, the claims are rejected under 35 U.S.C. 101.
Notice
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Allowable Subject Matter over Prior Art
Claims 1-13, 18, 19, and 21-25 are allowable over prior art.
The closest prior art found are:
Schiller (US 20100100572 A1) is directed to a method and system for docketing and reporting activities related to legal case by first establishing a database in a computer memory for storing case data comprised of a plurality of docket records associated with the legal case. The database is then populated with one or more docket records. A court sourced alert associated with the legal case is received via a communications network and loaded into the database. A docket report listing and identifying at least one docket record and the court sourced alert is generated and displayed to a subscriber or user. The user may then reconcile the court sourced alert with the docket record and the displayed docket report listing is modified to indicate that the court sourced alert has been reconciled with the docket record.
Schiller teaches the obtaining of an electronic document and the docket verification processing including obtaining, by at least one processor, an electronic document; annotating, by the at least one processor, the electronic document to provide metadata about contents of the electronic document; extracting, by the at least one processor, from the electronic document to complete a docket item template comprising rules for determining at least one expected docket item; producing a docketing requirement based on the docket item template for an entry to be made in the electronic docket corresponding to the electronic document; obtaining an electronic docketing report from the electronic docketing system; (para. [0013], [0044], [0049], and [0050]).
However, Schiller does not expressly teach the automatically determining if the electronic docketing report includes the at least one expected docket item according to the docketing requirement and generating a discrepancy notation if the at least one expected docket item is not on the report; wherein the docket item on the electronic docketing report is generated by the electronic docketing system using the docket item template, and further wherein the docket item template specifies an action and a due date for the action.
Lundberg (US 20200117753 A1) is directed to system and method for retrieving, from a storage device, a first data structure that includes docketing information for a plurality of matters from a source docketing system; searching a publicly available database to retrieve information associated with the first matter; verifying that data in at least one field of the first matter matches data in a corresponding field of the retrieved information; automatically detecting existence of an error in the first matter based on a combination of two or more fields of the first matter; and storing the first matter in a target docketing system.
Lundberg specifically teaches the obtaining an electronic docketing report from the electronic docketing system; automatically determining if the electronic docketing report includes the at least one expected docket item according to the docketing requirement and generating a discrepancy notation if the at least one expected docket item is not on the report (abstract and para. [0052], [0056], and [0064]);
wherein the docket item on the electronic docketing report is generated by the electronic docketing system using the docket item template (para. [0048]), and further wherein the docket item template specifies an action and a due date for the action (para. [0036]), and
automatically generating an error report including an entry for any discrepancy notation (para. [0045] disclosing the flagging of any discrepancies detected based on the comparison. Furthermore, see para. [0052], [0056], and [0064]).
However, Lundberg does not expressly teach the wherein the electronic docketing system generates the docket item independently of the docket verification process.
The combination of the above references does not explicitly teach the specific configuration of annotating, by the at least one processor, the electronic document to embed one or more annotations containing metadata about contents of the electronic document at one or more locations within the electronic document, wherein annotating the electronic document comprises applying a machine learning model trained using a data warehouse of prior identified documents to analyze unstructured text included in the electronic document, wherein the machine learning model identifies, from the unstructured text, at least one rule for determining at least one expected docket item, and embedding the identified rule as an annotation within the electronic document, wherein the annotation indicates the at least one rule for determining the at least one expected docket item; extracting, by the at least one processor, the one or more annotations from the electronic document to complete a required docket item template according to the at least one rule for determining at least one expected docket item; (i.e. in the particular manner it is claimed in the context of the whole claim is not disclosed, taught or suggested in the prior art(s)).
Examiner notes that the underlined limitations above, in combination with the other limitations found within the independent claims are found to be allowable over the prior art of record.
The prior art of record neither anticipates nor fairly and reasonably teach the independent claims 1, 6, and 11.
Examiner notes that while applicant has overcome the art of record, the application is not in condition for allowance, given the outstanding rejection under 35 U.S.C. 101.
Relevant Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. The additional cited art, including but not limited to the excerpts below, further establishes the state of the art at the time of Applicant’s invention and shows the following was known:
Meece et al. (US 20060178925 A1) is directed to a litigation-docket software may be used by teams of litigation attorneys for entering, maintaining, and viewing information about litigation events. Litigation-docket entries may contain information, such as start and end times and a responsible attorney, about litigation events, such as court hearings, brief-due dates, depositions, and the like. After a litigation-docket entry is created, instances (i.e., copies) of the litigation-docket entry are sent to members of the litigation team. A recipient may accept, reject, or tentatively accept the litigation-docket-entry instance. Recipients may request that the entry creator make changes to information within the litigation-docket entry. Upon the entry creator making such a change, instances of the revised litigation-docket entry will be sent to litigation-team members. A verification utility may be used to verify that litigation-team members have litigation-docket-entry instances that are consistent with one another. A user may customize the user's view of their litigation-docket entries.
Gupta et al. (US 9607058 B1) is directed to systems and methods for managing documents such as a prior art documents and documents for submission to government agencies such as an information disclosure statement (IDS) configured for submission to a patent office. In certain aspects, the system and methods include automatic retrieval of relevant documents, for example using a crawler service over a network such as the Internet. In certain aspects, the systems and methods include automatic optical character recognition and template matching to facilitate the extraction of information relating to certain documents. In certain aspects, the system and methods include a generating interface configured to present information to a generating user and to allow the generating user to select options relating to the citation of references in a particular patent family.
Tran (US 20050210009 A1) is directed to systems and methods are disclosed for providing an electronic file for intellectual property applications by receiving electronic file wrapper information from a patent office; and generating a single electronic document for an entry in the electronic file wrapper information.
N. Sannier et al., "Legal Markup Generation in the Large: An Experience Report," 2017 IEEE 25th International Requirements Engineering Conference (RE), Lisbon, Portugal, 2017, pp. 302-311, doi: 10.1109/RE.2017.10.
Vacek et al. (US 20190385253 A1) is directed to systems and methods for analyzing and extracting data related to a structured proceeding, and for identifying, based on the analysis, at least one outcome associated with the structured proceeding. Embodiments provide for receiving data associated with a structured proceeding involving at least one party, the data including at least one docket entry, and analyzing, by an outcome location detector, the data to identify one or more docket entries in the at least one docket entry that are likely to include evidence of an outcome.
Response to Remarks
35 U.S.C. 101 Rejections:
The Applicant’s remarks on pages 9-11 are fully considered, however are found to be unpersuasive.
Applicant has conflated the abstract idea, considered at Step 2A Prong One, with the additional elements, considered at Step 2A Prong Two and Step 2B. Here, Examiner identified the following steps as part of the abstract idea: obtaining a document; annotating the document to include annotations of metadata (attributes) about the content on the document, based on rule-based model; analyzing the unstructured text to identify a rule for an expected docket item; obtaining a docketing report; determining if the report includes the expected docket item; and generating an error report if there is a discrepancy. These steps can be performed by a human docketing clerk or auditor as indicated by the Applicant’s specification. The computer, processor, machine learning model, etc. are considered additional elements, which are merely facilitating the tasks of said abstract idea. MPEP 2106.05(f) is clear that this generic recitation does not integrate the abstract idea into practical application and/or add significantly more. This interpretation holds whether the additional elements are viewed alone or in combination, where the combination of elements is nothing more than a network-enabled computing system.
The Examiner respectfully disagrees with the Applicant’s analysis in comparison with Enfish and Bascom.
As indicated in the Applicant’s specification, para. [0002]-[0003] which states a business problem of human error and efficiency. The Applicant fails to provide persuasive argument for the “improvement to other technology or technical field.” That is, as reflected in Enfish, there is a fundamental difference between computer functionality improvements (improvement of the technology or technical field), on the one hand, and uses of existing computers as tools to perform a particular task (collecting, analyzing, and displaying information), on the other. The alleged advantages that the Applicant touts do not concern an improvement to computer capabilities or any machinery but instead relate to an alleged improvement in transmitting, analyzing, and determining information for a desirable result, which a computer and software are used as a mere tool in its ordinary capacity, see MPEP 2106.05(f) “The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it". See Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1356, 119 USPQ2d 1739, 1743-44 (Fed. Cir. 2016); Intellectual Ventures I v. Symantec, 838 F.3d 1307, 1327, 120 USPQ2d 1353, 1366 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1417 (Fed. Cir. 2015).”. To further clarify, the Applicant reflected a business reason of the abstract idea for the collecting and analyzing documents to report error for business and law firms. The computer and software, itself is merely used “applied” for the expected result of accuracy, convenience, and time/cost saving (efficiency). The claims do not reflect an improvement to the technology of the computer functionalities other than by using the additional elements of the computer system and software function, the desired result can be produced without a doubt and concern to technological details for how it is done. The specification nor the claims focused on the improvement or how the annotating of document or training machine learning model to analyze unstructured text are actually performed in technological detail. That is, the computer system itself or specific technology is not improved in anyway other than being applied as a tool/instrument for the judicial exception (abstract idea).
Further, in numerous court decisions found the use of computer to perform computer process in a convenience (e.g., more efficient, faster, and etc.) has been held not be an “inventive concept” or specific improvement, see MPEP 2106.05(f)(2), “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). A process for monitoring audit log data that is executed on a general-purpose computer where the increased speed in the process comes solely from the capabilities of the general-purpose computer, FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016).
The provided citations from the specification do not provide support for the specific technical mechanisms of the machine learning model processor or data extraction. That is, the specification indicates computer system with machine learning model system is applied to produce the desired result without a doubt or concern to the technological details on how the result is accomplished.
Furthermore, the examiner asserts the patentability or eligibility of claimed invention under 35 U.S.C. 102 or 35 U.S.C. 103 with respect to prior art is separate and distinct requirements for the patent eligibility under 35 U.S.C. 101. This is best addressed in MPEP 2106.04 (bold emphasis). “The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 (“the novelty of the mathematical algorithm is not a determining factor at all”); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 (“Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry.”). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was “new”. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) (“a new abstract idea is still an abstract idea”) (emphasis in original).”
For above-mentioned reasons, the 101 rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENREN CHEN whose telephone number is (571)272-5208. The examiner can normally be reached Monday - Friday 10AM - 6PM.
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/WENREN CHEN/Primary Examiner, Art Unit 3626
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