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 Arguments
Applicant's arguments filed 1/30/26 have been fully considered but they are not persuasive. Applicant argues the USC 101 and specifically the term training.
In response, training a machine learning model amounts to 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 - see MPEP 2106.05(f) – Examiner’s note: high level recitation of training a machine learning model with previously determined data.
It is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
Using e.g., a trained machine learning model to e.g., predict… amounts to 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 - see MPEP 2106.05(f).
"The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation."
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.
Claim 1-8, 10-14, and 16-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites a system (i.e., machine) and, therefore, falls within one or more statutory categories.
Claim 1 recites: obtaining an input comprising textual data, wherein the textual data is segmentable into one or more words; obtaining a list of affixes; determining conditional probabilities for affixes in the list of affixes, wherein each conditional probability represents a value assigned to a respective affix, the value indicating a likelihood that adding the affix to the one or more words of the textual data results in a desirable domain name; ranking the affixes based on the conditional probabilities to generate a ranked list of affixes; and providing one or more domain name suggestions based on the ranked list of affixes. The obtaining an input limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of suggested segmentable text (e.g., words) for a domain name. The limitation of obtaining a list of affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of additional words associated with the suggested words. The limitation of determining a conditional probability, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the claim encompasses the user manually calculating the likelihood that each of the additional words is desirable in association with the suggested words. The limitation of ranking the affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user thinking that the additional words that are most desirable in association with the suggested words should be ranked higher than the words that are less desirable. The limitation of providing one or more suggested domain name suggestions, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user speaking or writing a domain name suggestion based on the most desirable additional words in association with the suggested words. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 1 recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: a processing system of a device comprising one or more processors; a memory system comprising one or more computer-readable media, wherein the one or more computer-readable media contain instructions that, when executed by the processing system, cause the processing system to perform the operations; and wherein determining conditional probabilities for affixes in the list of affixes comprises assigning conditional probabilities for the affixes based on a trained language model operated by the system, wherein the trained language model is trained to receive one or more words and provide conditional probabilities for the received one or more words. The processing system and memory system are recited at a high-level of generality (i.e., as a generic processor and generic memory containing instructions to perform the operations) such that it amounts to no more than mere instructions to apply the exception using generic computer components. The use of a language model is recited at a high-level of generality it such that it amounts to no more than mere instructions to apply the exception using a generic computer component. In particular, the “language model” is any kind of model, used in any manner, that performs a generic computer function of computing a probability such that the conditional probability assignment is based, in any manner, upon the model. Accordingly, these elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 1 is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the elements of a processing system, a memory system to perform all the steps, and assigning conditional probabilities based on a trained language model amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 1 is not patent eligible.
Claim 11 recites a method (i.e., process) and, therefore, falls within one or more statutory categories.
Claim 11 recites: obtaining an input comprising textual data, wherein the textual data is segmentable into one or more words; obtaining a list of affixes; determining conditional probabilities for affixes in the list of affixes, wherein each conditional probability represents a value assigned to a respective affix, the value indicating a likelihood that adding the affix to the one or more words of the textual data results in a desirable domain name; ranking the affixes based on the conditional probabilities to generate a ranked list of affixes; and providing one or more domain name suggestions based on the ranked list of affixes. The obtaining an input limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of suggested segmentable text (e.g., words) for a domain name. The limitation of obtaining a list of affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of additional words associated with the suggested words. The limitation of determining a conditional probability, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the claim encompasses the user manually calculating the likelihood that each of the additional words is desirable in association with the suggested words. The limitation of ranking the affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user thinking that the additional words that are most desirable in association with the suggested words should be ranked higher than the words that are less desirable. The limitation of providing one or more suggested domain name suggestions, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user speaking or writing a domain name suggestion based on the most desirable additional words in association with the suggested words. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 11 recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional element of: wherein determining conditional probabilities for affixes in the list of affixes comprises assigning conditional probabilities for the affixes based on a trained language model operated by the system, wherein the trained language model is trained to receive one or more words and provide conditional probabilities for the received one or more words. The use of a language model is recited at a high-level of generality it such that it amounts to no more than mere instructions to apply the exception using a generic computer component. In particular, the “language model” is any kind of model, used in any manner, that performs a generic computer function of computing a probability such that the conditional probability assignment is based, in any manner, upon the model. Accordingly, these elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 11 is directed to an abstract idea.
Claim 11 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the element of assigning conditional probabilities based on a trained language model amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 11 is not patent eligible.
Claim 16 recites a non-transitory computer readable medium and, therefore, falls within one or more statutory categories.
Claim 16 recites: obtaining an input comprising textual data, wherein the textual data is segmentable into one or more words; obtaining a list of affixes; determining conditional probabilities for affixes in the list of affixes, wherein each conditional probability represents a value assigned to a respective affix, the value indicating a likelihood that adding the affix to the one or more words of the textual data results in a desirable domain name; ranking the affixes based on the conditional probabilities to generate a ranked list of affixes; and providing one or more domain name suggestions based on the ranked list of affixes. The obtaining an input limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of suggested segmentable text (e.g., words) for a domain name. The limitation of obtaining a list of affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user hearing or thinking of additional words associated with the suggested words. The limitation of determining a conditional probability, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, the claim encompasses the user manually calculating the likelihood that each of the additional words is desirable in association with the suggested words. The limitation of ranking the affixes, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user thinking that the additional words that are most desirable in association with the suggested words should be ranked higher than the words that are less desirable. The limitation of providing one or more suggested domain name suggestions, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this claim encompasses the user speaking or writing a domain name suggestion based on the most desirable additional words in association with the suggested words. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 1 recites an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of: a non-transitory computer-readable medium storing instructions that, when executed by one or more processors, cause the processors to perform the method; and wherein determining conditional probabilities for affixes in the list of affixes comprises assigning conditional probabilities for the affixes based on a trained language model operated by the system, wherein the trained language model is trained to receive one or more words and provide conditional probabilities for the received one or more words. The computer-readable storage medium and processor are recited at a high-level of generality (i.e., as a generic computer readable medium containing instruction executable is any manner on a kind of generic processor) such that it amounts to no more than mere instructions to apply the exception using generic computer components. The use of a language model is recited at a high-level of generality it such that it amounts to no more than mere instructions to apply the exception using a generic computer component. In particular, the “language model” is any kind of model, used in any manner, that performs a generic computer function of computing a probability such that the conditional probability assignment is based, in any manner, upon the model. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, claim 16 is directed to an abstract idea.
Claim 16 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the elements of: a non-transitory computer-readable medium storing instructions that, when executed by one or more processors, cause the processors to perform the method; and the assigning conditional probabilities based on a trained language model amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 16 is not patent eligible.
Claims 2, 12, and 17 depend from claims 1, 11, and 16, respectively, and further recite that the list of affixes comprises generic top-level domains (gTLDs), wherein the gTLDs are contextually relevant to the textual data. This limitation modifies the obtaining limitation discussed above regarding claims 1, 11, and 16, which, under its broadest reasonable interpretation, still covers performance of the limitation in the mind. For example, this claim encompasses the user thinking of generic top level domains associated with the textual data. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claims 2, 12, and 17 recite an abstract idea. This judicial exception is not integrated into a practical application. Claims 2, 12, and 17 do not recite any additional elements behind those already discussed above regarding claims 1 and 16 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claims 2, 12, and 17 are directed to an abstract idea. Claims 2, 12, and 17 do not recite any additional elements sufficient to amount to significantly more than the judicial exception. As discussed above regarding integration into a practical application, no addition elements are recited beyond those discussed above regarding claims 1 and 16. Accordingly, claims 2, 12, and 17 cannot provide an inventive concept. Therefore, claims 2, 12, and 17 are not patent eligible.
Regarding claim 3, Carroll teaches the system of claim 2, wherein the gTLDs in the list of affixes are based on at least one of: available gTLDs; words in a dictionary for a selected language; words in a dictionary for a determined language of the textual data; words from a dictionary with a selected syntactical function (e.g., nouns); or gTLDs from domain names in a zone file. Claim 3 depends from claim 2 and further recites that the gTLDs in the list of affixes are based on at least one of: available gTLDs; words in a dictionary for a selected language; words in a dictionary for a determined language of the textual data; words from a dictionary with a selected syntactical function (e.g., nouns); or gTLDs from domain names in a zone file. This limitation modifies the obtaining affixes limitation discussed above regarding claims 1 and 2 and, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this limitation encompasses the user thinking of gTLD affixes from words in a dictionary for a determined language of the textual data. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 3 recites an abstract idea. This judicial exception is not integrated into a practical application. Claim 3 doesn’t recite any additional elements beyond those already discussed above regarding claim 1 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, the claim doesn’t integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 3 is directed to an abstract idea. Claim 3 doesn’t recite any additional elements behind those already discussed above regarding claim 1 that are insufficient to amount to significantly more than the judicial exception. Accordingly, claim 3 still amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 3 is not patent eligible.
Claim 4 depends from claim 2 and further recites that determining conditional probabilities for affixes in the list of affixes comprises determining conditional probabilities for the gTLDs in the list of affixes, wherein the conditional probability represents a value assigned to the gTLD, and wherein the value assigned to the gTLD indicates the likelihood that a domain name with the textual data and the gTLD results in a desirable domain name. This limitation modifies the determining limitation discussed above regarding claim 1 and, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this limitation encompasses the user thinking or manually determining probability value for the gTLDs of the affix list such that each gTLD is assigned value indicating the likelihood that the combination of gTLD and text is desirable. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 4 recites an abstract idea. This judicial exception is not integrated into a practical application. Claim 4 doesn’t recite any additional elements beyond those already discussed above regarding claim 1 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, the claim doesn’t integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 4 is directed to an abstract idea. Claim 4 doesn’t recite any additional elements behind those already discussed above regarding claim 1 that are insufficient to amount to significantly more than the judicial exception. Accordingly, claim 4 still amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 4 is not patent eligible.
Claim 5 depends from claim 4 (which recite an abstract idea – See above) and further recites the additional element of determining conditional probabilities for the gTLDs comprises assigning the conditional probabilities to the gTLDs using a language model. The use of a language model is recited at a high-level of generality (i.e., a language model of any kind, used in any manner, to performing a generic computer function of computing a probability) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 5 is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a language model to perform the determining step amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply the exception using a generic computer component cannot provide an inventive concept. Therefore, claim 5 is not patent eligible.
Claim 6 depends from claim 1 and further recites that determining a conditional probability for an affix in the list of affixes comprises assigning a conditional probability based on a position of the affix positioned in the textual data. This limitation modifies the determining limitation discussed above regarding claim 1 and, under its broadest reasonable interpretation, covers performance of the limitation in the mind. For example, this limitation encompasses the user manually determining probability for an affix such that earlier position in the textual data are assigned higher probability. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claim 9 recites an abstract idea. This judicial exception is not integrated into a practical application. Claim 6 doesn’t recite any additional elements beyond those already discussed above regarding claim 1 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, the claim doesn’t integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 6 is directed to an abstract idea. Claim 6 doesn’t recite any additional elements behind those already discussed above regarding claim 1 that are insufficient to amount to significantly more than the judicial exception. Accordingly, claim 6 still amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply the exception using generic computer components cannot provide an inventive concept. Therefore, claim 6 is not patent eligible.
Claims 7, 13, and 18 depend from claims 1, 11, and 16, respectively, and further recite that determining conditional probabilities for affixes in the list of affixes comprises determining a plurality of conditional probabilities for an affix in the list of affixes. This limitation modifies the determining limitation discussed above regarding claims 1, 11, and 16, which, under its broadest reasonable interpretation, still covers performance of the limitation in the mind. For example, this claim encompasses the user thinking of multiple probabilities for an affix based on the affix position. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claims 2, 12, and 17 recite an abstract idea. This judicial exception is not integrated into a practical application. Claims 7, 13, and 18 do not recite any additional elements behind those already discussed above regarding claims 1 and 16 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claims 7, 13, and 18 are directed to an abstract idea. Claims 7, 13, and 18 do not recite any additional elements sufficient to amount to significantly more than the judicial exception. As discussed above regarding integration into a practical application, no addition elements are recited beyond those discussed above regarding claims 1 and 16. Accordingly, claims 7, 13, and 18 cannot provide an inventive concept. Therefore, claims 7, 13, and 18 are not patent eligible.
Claims 8, 14, and 19 depend from claims 7, 13, and 18, respectively, and further recite that determining a plurality of conditional probabilities for the affix in the list of affixes comprises two or more of: assigning a first conditional probability for adding the affix as a prefix to the one or more words of the textual data; assigning a second conditional probability for adding the affix between two particular words in the textual data; or assigning a third conditional probability for adding the affix as a suffix to the one or more words of the textual data. This limitation modifies the determining limitation discussed above regarding claims 7, 13, and 18, which, under its broadest reasonable interpretation, still covers performance of the limitation in the mind. For example, this claim encompasses the user thinking of multiple probabilities for an affix, with one probability based on the affix being a prefix. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract idea. Accordingly, claims 8, 14, and 19 recite an abstract idea. This judicial exception is not integrated into a practical application. Claims 8, 14, and 19 do not recite any additional elements behind those already discussed above regarding claims 1 and 16 that amount to no more than mere instructions to apply the exception using generic computer components. Accordingly, these elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claims 8, 14, and 19 are directed to an abstract idea. Claims 8, 14, and 19 do not recite any additional elements sufficient to amount to significantly more than the judicial exception. As discussed above regarding integration into a practical application, no addition elements are recited beyond those discussed above regarding claims 1 and 16. Accordingly, claims 8, 14, and 19 cannot provide an inventive concept. Therefore, claims 8, 14, and 19 are not patent eligible.
Claim 10 depends from claim 9 (which recites an abstract idea – See above) and further recites the additional element of the language model comprises at least one of: a feed-forward neural network with one or more non-linear hidden layers, or a log-linear language model. The use of a either a feed-forward neural network with one or more non-linear hidden layers, or a log-linear language model as the language model is recited at a high-level of generality (i.e., a generic forward neural network of any kind with standard layers or a generic log-linear model off any kind, used in any manner, to performing a generic computer function of computing a probability) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, claim 10 is directed to an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using either a feed-forward neural network with one or more non-linear hidden layers or a log-linear language model as the language model to perform the determining step amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply the exception using a generic computer component cannot provide an inventive concept. Therefore, claim 10 is not patent eligible.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexey Shmatov can be reached at 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123