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 .
Priority
The examiner acknowledges the present application is a CIP of 17/582,852. Claim 1 recites elements not present in parent claim 17/582,852. As such, claim 1 (and its dependent claims) have a priority date of the filing date of this application, which is 2/28/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/28/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the abstract of the disclosure is objected to because the abstract is a repeat of claim 1. Applicant is reminded of the proper language and format for an abstract of the disclosure. The sheet or sheets presenting the abstract may not include other parts of the application or other material. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Applicant is reminded that the purpose of the abstract is to enable the Office and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure. Correction is required. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “prompt-engineering.” It is unclear if this is done by user or by system. Examiner interprets this as being performed by a human user. Additionally, “prompt-engineering” is a relative term: instant specification pg. 82 recites “Prompt Engineering is a process that creates a prompting function that gives the best performance for the next task.” This definition of prompt-engineering includes “best,” which is a relative term. Because of this, “prompt-engineering” is also a relative term. What’s best for one person may be different than what’s best for another person. Furthermore, “prompt-engineering,” in the art, is the process of structuring or crafting an instruction in order to produce better outputs from a generative artificial intelligence (AI). Structuring instructions to produce “better” results is also relative. For the purposes of express examination, the Examiner interprets prompt-engineering as “inputting”
Claim 1 recites “summary.” It is unclear what is being summarized, or a summary of what? Is this a summary of the invention, or a summary section of a document, or a summary of a solution, or a summary of major points in an article, or some other summary? The Examiner interprets this to be any kind of text. Additionally, if this is a summary of an invention, why not feed the entire, non-summarized, source into the transformer? Wouldn’t that generate better results? If an entire, non-summarized source is not available, then is this input really a “summary,” at this point? Since there is no source material to summarize. Clarification on this point is also required.
Claim 1 recites “description,” “brief description,” “detailed description,” and “expanded description.” The terms “description,” “brief description,” “detailed description,” and “expanded description” are unclear. These are all terms used in the claims; however, the specification does not define these terms. The examiner is unable to determine the difference between these types of descriptions. How “detailed” does a detailed description need to be? How “brief” does a brief description need to be? How much longer does an “expanded” description need to be? The examiner interprets these terms to be any kind of text.
Claim 1 recites “displaying” a set of claims. It is unclear how this is being displayed. What is it being displayed on? A transformer by itself does not have the ability to display anything.
Claim 1 recites “a set of claims.” It is unclear what is “a set of claims.” Specification does not define this. Examiner interprets this to mean text.
Claim 1 recites “receiving” one or more figures. It is unclear who or what is doing the receiving. Furthermore, receiving indicates that there is also a sending. Who or what is doing the sending? A transformer by itself does not have to ability to send. The examiner interprets receiving to mean receiving user input.
Claim 1 recites “receiving” a part list. It is unclear who or what is doing the receiving. Furthermore, receiving indicates that there is also a sending. Who or what is doing the sending? A transformer by itself does not have to ability to send. The examiner interprets receiving to mean receiving user input.
Claim 1 recites prompt engineering based on “prior text in the document.” It is unclear where this “prior text in the document” is coming from. This invention is a method to generate a document. How can there be prior text when the invention is still generating the document? Is this a different section of the document, a different version of the document, a different transformation of the document, or something else? Examiner interprets this to mean any text on any version of the document.
Claim 1 recites “selecting” one or more boilerplate texts. It is unclear who or what is doing the selecting. Examiner interprets a user performing the selection.
Claim 1 recites selecting one or more “boilerplate texts.” It is unclear what “boilerplate text” is. The specification does not define this. “Boilerplate text” appears to be slang, or informal speech. Examiner interprets this to mean text.
Claim 1 recites boilerplate text for “major” sections of the document. This is relative term. How large of a section does it need to be to becomes a “major” section? What a “major” section is to one person, may not be a “major” section to another person.
Claim 1 recites “organizing” the document. It is unclear who or what is doing the organizing. Is this performed by the transformer, by the computer after text has been transformed, or manually? The Examiner is unable to determine the meets and bounds of the invention.
Claim 2 recites “background.” It is unclear what this is a background to. What is this a background for? The specification does not define this term. Examiner interprets this as text.
Claim 3 recites the limitation "the prompt-engineered input text." There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites “prior text” using the transformer. It is unclear where this “prior text using the transformer” is coming from. Has the transformer been used previously? Is there a history of prior text used as input to this transformer? Or is this a history of prior text outputted from the transformer? This “prior text using the transformer” appears to be different from the “prior text in the document” in claim 1. The Examiner interprets this to mean text.
Claim 13 recites the limitation prompt-engineering "the input." There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites “immediate prior text.” It is unclear where this “immediate prior text generated by the transformer” is coming from. The examiner does not see any steps involving immediate prior text generated by the transformer.
Claims 14-15 recite “documents relevant” to the set of claims. It is unclear what these documents are. Claim 14-15’s “documents” appear to be different than claim 1’s “document.” Claim 14-15’s “document” appears to be prior art type documents, and claim 1’s “document” appears to be an inventive patent application type document. Appropriate correction is required.
Claims 14-15 recite “documents relevant” to the set of claims. This is a relative term. How relevant do these need to be? What is relevant to one person may not be relevant to another person.
Claim 14 recites the limitation "each matching document." There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites “each matching document.” It is unclear what is matching to what. There is no meets and bounds for what is matching to what.
Claim 15 recites “mapping a portion of the document.” It is unclear what is “mapping.” The specification does not define this term. Examiner interprets this to mean matching.
Claim 15 recites “a claim element.” It is unclear what is a “claim element.” The specification does not define this term. Examiner interprets this to mean text.
Claim 16 recites “a method claim,” and a “set of method claims.” It is unclear what is a “method claim,” and a “set of method claims.” The specification does not define these terms. There is no meets and bounds for a “method claim,” nor a “set of claims.” Examiner interprets this to mean text.
Claim 16-7 recites “a box.” It is unclear what is a box in this instance. Neither is this defined in the spec. Is it a physical box? The claims do not recite a box drawn or a box displayed. Neither do the claims recite drawing connected lines.
Claim 16-17 recites “connecting all boxes together.” The claims do not require more than one box. A method may have only 1 step, or 1 box. In this situation, what does it mean to “connect all boxes together?” It is unclear what happens in this scenario.
Claim 17 recites “each step of a method claim.” It is unclear what “each step of a method claim” is. How are “steps” defined?
Claim 17 recites “data storage symbol.” It is unclear what a “data storage symbol” is. This term is not defined in the specification. The Examiner interprets this to mean a symbol.
Claim 17 recites “computer system diagram.” It is unclear what a “computer system diagram” is. This term is not defined in the specification. The Examiner interprets this to mean a diagram.
Claims 2-20 are dependent claims, and inherit the 35 U.S.C. §112(b) rejections from their independent claim(s).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 for establishing a background for determining obviousness under 35 U.S.C. 103 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.
Claims 1, 4-12, 16-17, and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tran, Patent Application Publication number US 20190340217 A1, (hereinafter “Tran”), in view of Wright, Patent Application Publication number US 20230259692 A1 (hereinafter “Wright”), in view of Peleg et al., Patent Application Publication number US 20230186017 A1 (hereinafter “Peleg”).
Claim 1: Tran teaches “A method of generating a document…, comprising:…
generate a description of the document (i.e. process 200 then assists the user in drafting the application… the agent guides the user in generating a description, which is a detailed discussion of the invention (step 214) [Tran 0046] note: generating a patent application as a document. Note2: “description,” “brief description,” “detailed description,” and “expanded description” are all terms used in the claims; however, the specification does not define these terms. The examiner is unable to determine the difference between these types of descriptions. The examiner interprets these terms to be any kind of text. See section 112);
displaying a set of claims and allowing user editing of the set of claims (i.e. FIG. 3C shows an exemplary graphical representation of an exemplary claim. The user can select a claim element and add new elements or delete an existing element. All other elements will then be automatically adjusted accordingly [Tran 0061, Fig. 3C]);
receiving one or more figures (i.e. the user is prompted to sketch all figures (step 394) [Tran 0068, Fig. 4]);
receiving a part list with a plurality of element names for each figure (i.e. the user is prompted to sketch all figures (step 394). Each figure is composed of one or more elements, each of which has a name. The process 390 collects the name [Tran 0068, Fig. 4]);
generating an expanded description of each element name through prompt engineering based on prior text in the document (i.e. process 390 collects the name and the relationship of the elements into a data structure that will be used to check conformance to the claim language and to generate a first draft of the description in FIG. 5 (step 396) [Tran 0068, Fig. 4]… description is a textual description of the drawings [Tran 0069, Fig. 5] note: “check conformance to claim language” is based on prior text in the document);…
organizing the document with the title, a background, the summary, a brief description of the drawings, and a detailed description (i.e. the order of arrangement is: Title of the invention… Background of the invention… Brief summary of the invention… Brief description of the several views of the drawing… Detailed description of the invention [Tran 0047]).”
Tran is silent regarding “prompt-engineering the transformer with a title and a summary…”
Wright teaches “A method of generating a document with a transformer, comprising:
prompt-engineering the transformer (i.e. a transformer model that may be used for generating a modifiable product description [Wright 0021]) with a title and a summary to generate a description of the document (i.e. input 502 may be… one or more example product title and product description pairs… for which the merchant wants a modifiable product description generated [Wright 0080]… product catalog may include a product title… product catalog may also include a product description for each product [Wright 0115, Fig. 7] note: a new description is generated from an input of a title and product description. This new description is a portion of the “product catalog” document. note: instant specification pg 3 recites “10.. the transformer comprises a generative pre-trained transformer (GPT).” This indicates an AI software, for example, ChatGPT);”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran to include the feature of having the ability to use a generative pre-trained transformer (GPT) to generate text as disclosed by Wright.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit of saving users time, since “creating individual… descriptions can be time consuming [Wright 0061].”
Tran and Wright are silent regarding “selecting one or more boilerplate texts for major sections of the document;”
Peleg teaches “selecting one or more boilerplate texts for major sections of the document; and (i.e. A user may manually select one or more templates to aid in information entry [Peleg 0124] note: boilerplate is interpreted as text, see section 112).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright to include the feature of having the ability to select text as disclosed by Peleg.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit for the user to pick and choose whichever text sections they need, which saves the user time over manual input, and improves the user’s flexibility.
Claim 4: Tran and Wright and Peleg teach all the limitations of claim 1, above. Wright teaches generating text using a transformer (see Wright 0021 in claim 1, above). Tran teaches “comprising generating an advantage of an invention from prior text using the transformer (i.e. A summary of the invention… [is] automatically generated… The summary may point out the advantages of the invention or how it solves problems previously existent in the art [Tran 0046]).”
Claim 5: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising generating one or more figures including a flowchart from the set of claims (i.e. FIG. 3D is a flowchart [Tran 0062, Fig. 3D] note: Fig. 3D shows a screenshot of a computer program that has broken up a claim and placed them into a flowchart).”
Claim 6: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising graphically representing the set of claims along with claim dependency data (i.e. can show a claim tree to help user visualize inter-claim relationship (step 310) [Tran 0059, Fig. 3B]) and graphically moving one or more claims in the set of claims to show dependency (i.e. To move claims, the user can drag/drop claims and the claims will automatically be renumbered to show their new relationship [Tran 0059, Fig. 3B]).”
Claim 7: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising diagnosing and describing one or more errors in the document (i.e. If no matching occurs for the text in the current claim and if claim is a dependent claim, the process 340 searches parent claims for antecedent basis support (step 360). This is done by searching the element table for each claim. If all claims have been searched and no match exists, the process 340 highlights the element with “the” or “said” to indicate a problem and generates an antecedent basis error message (step 362) [Tran 0066]).”
Claim 8: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising dragging or moving a claim to change claim dependency and renumbering the claim and dependency numbering for the dragged or moved claim and renumbering the remaining claims accordingly (i.e. To move claims, the user can drag/drop claims and the claims will automatically be renumbered to show their new relationship [Tran 0059, Fig. 3B]).”
Claim 9: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising generating a list of claimed elements and a list of unclaimed elements (i.e. With each independent claim, select the one or more elements that can be omitted from a commercial product [Tran, Table between 0056 and 0057] note: this is a list of claimed elements, and a user is selecting elements to remove or change, in order to become unclaimed elements).”
Claim 10: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising diagnosing antecedent issues in the document (i.e. If no matching occurs for the text in the current claim and if claim is a dependent claim, the process 340 searches parent claims for antecedent basis support (step 360). This is done by searching the element table for each claim. If all claims have been searched and no match exists, the process 340 highlights the element with “the” or “said” to indicate a problem and generates an antecedent basis error message (step 362) [Tran 0066]), support for claim text in the detailed description (i.e. searching each entry in the element table for each claim against the description generated. If one or more elements recited in the claims are not shown in the description, the claim element is highlighted and an error message is shown (step 422) [Tran 0073]), or support for means language in the detailed description (i.e. process 340 adds an entry to cover the “means for”+gerund form (for example, means for adding) (step 350). The noun phrase is saved in an element table [Tran 0065]… searching each entry in the element table for each claim against the description generated. If one or more elements recited in the claims are not shown in the description, the claim element is highlighted and an error message is shown (step 422) [Tran 0073]).”
Claim 11: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising detecting text describing performance improvement of a machine using a method or a system (The limitation “text describing performance improvement of a machine using a method or a system” appears to be non-functional descriptive language. See MPEP 2111.05) recited in the set of claims (i.e. If no matching occurs for the text in the current claim… all claims have been searched and no match exists [Tran 0066] note: matching requires detecting text recited in the claims).”
Claim 12: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising generating proposed text describing performance improvement of a processor or a machine relating to software or hardware (The limitation “text describing performance improvement of a processor or a machine relating to software or hardware” appears to be non-functional descriptive language. See MPEP 2111.05) recited in a set of claims (i.e. the user is guided to draft one or more independent claims (step 301)… the agent guides the user through a series of sequence to broaden the independent claim while preserving validity over known prior art (step 302) [Tran 0054]… suggesting broader and narrower terms for the claims or the description [Tran claim 11] note: a set of claims is recited. Then the claims are improved upon with proposed text).”
Claim 16: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising generating a flow chart for a set of method claims, placing each step of a method claim in a box, connecting all boxes together (i.e. FIG. 3D is a flowchart [Tran 0062, Fig. 3D] note: Fig. 3D shows a screenshot of a computer program that has broken up a claim and placed them into a flowchart), and placing all boxes between a start symbol and an end symbol (Tran Fig. 3F shows a flowchart with a start box and an end box. The start box is the one with only arrows pointing away from it. The end box is the one with only arrows pointing into it. The end box is also labeled ‘Exit’. Note: Tran teaches generating a flowchart. Tran also teaches a flowchart with a starting box and an end box. One of ordinary skill in the art could have substituted the start and end boxes into the generation of a flowchart, which yields the predictable result of generating a flowchart with start and end boxes. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art).”
Claim 17: Tran and Wright and Peleg teach all the limitations of claim 16, above. Tran teaches “comprising placing each step of a method claim in a box, connecting all boxes together (i.e. FIG. 3D is a flowchart [Tran 0062, Fig. 3D] note: Fig. 3D shows a screenshot of a computer program that has broken up a claim and placed them into a flowchart), and placing all boxes in a data storage symbol, wherein the data storage symbol is part of a computer system diagram (Tran Fig. 3F shows steps in connected boxes, the boxes symbolize steps or decision nodes, and they are part of diagram “370.” See section 112a).”
Claim 19: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “comprising checking for means-plus-function support in the description (i.e. looks for a matching occurrence of “a” or “an” indicating a start of noun phrase… if the noun phrase is gerund+means form, the process 340 adds an entry to cover the “means for”+gerund form (step 358) [Tran 0066]).”
Claim 20: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran teaches “generating a part list by performing optical recognition of parts in the drawing or by detecting noun phrases (NPs) in the document and corresponding numbers for the NPs (i.e. Identify all gerund phrases in claim except “comprising/including/ having” as antecedent basis candidates. Save noun phrase in an element table for the claim [Tran, Table between 0066 and 0067]).”
Claims 2, 3, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tran, in view of Wright, in view of Peleg, in view of Carey et al., Patent Application Publication number US 20210012444 A1 (hereinafter “Carey”).
Claim 2: Tran and Wright and Peleg teach all the limitations of claim 1, above. Wright teaches using prompt-engineering (see Wright 0021 and 0080, in claim 1, above).
Tran and Wright and Peleg are silent regarding “comprising generating a background using prompt-engineering.”
Carey teaches “comprising generating a background using prompt-engineering (i.e. instructions for generating text for an application section of a patent application based at least in part on the application data object, wherein the application section comprises a claims section, a summary section, a background section [Carey 0100]… user input may be used to create an application data object [Carey 0007] note: a background section is generated using user inputs).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to generate specific text as disclosed by Carey.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit to “facilitate efficient preparation of patent documents [Carey 0057].”
Claim 3: Tran and Wright and Peleg teach all the limitations of claim 1, above. Wright teaches applying a transformer based on prompt-engineering to generate text (see Wright 0021 and 0080, in claim 1, above).
Tran and Wright and Peleg are silent regarding “comprising applying the transformer to generate the set of claims based on the prompt-engineered input text.”
Carey teaches “comprising applying the transformer to generate the set of claims based on the prompt-engineered input text (i.e. instructions for generating text for an application section of a patent application based at least in part on the application data object, wherein the application section comprises a claims section, a summary section, a background section [Carey 0100]… user input may be used to create an application data object [Carey 0007] note: a claims section is generated using user inputs).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to generate specific text as disclosed by Carey.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit to “facilitate efficient preparation of patent documents [Carey 0057].”
Claim 13: Tran and Wright and Peleg teach all the limitations of claim 1, above. Wright teaches applying a transformer based on prompt-engineering to generate text (see Wright 0021 and 0080, in claim 1, above).
Tran and Wright and Peleg are silent regarding “wherein generating the expanded description comprises prompt-engineering the input to the transformer with immediate prior text generated by the transformer or by a user.”
Carey teaches “wherein generating the expanded description comprises prompt-engineering the input to the transformer with immediate prior text generated by the transformer or by a user (i.e. instructions for generating text for an application section of a patent application based at least in part on the application data object, wherein the application section comprises a claims section, a summary section, a background section… a detailed description section [Carey 0100]… user input may be used to create an application data object [Carey 0007] note: a detailed description is generated using user inputs. The immediate prior text is the input, an application data object, which is generated by a user).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to generate specific text as disclosed by Carey.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit to “facilitate efficient preparation of patent documents [Carey 0057].”
Claims 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan, in view of Wright, in view of Peleg, in view of Tran ‘994, Patent Application Publication number US 20130317994 A1 (hereinafter “Tran ‘994”).
Claim 14: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran and Wright and Peleg are silent regarding “comprising searching documents relevant to the set of claims and displaying each matching document or generating a summary of each matching document.”
Tran ‘994 teaches “comprising searching documents relevant to the set of claims and displaying each matching document or generating a summary of each matching document (i.e. the process can draft a method claim… the process can bring the user to a patent search engine… The process can assist the user with performing the search by providing the noun phrases in the independent claim in the search user interface. This default can be modified by the user to located relevant prior art [Tran ‘994 0167]).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to search and display documents as disclosed by Tran ‘994.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit of “an easy to use, cost-effective, high quality process for generating patent application [Tran ‘994 0009].”
Claim 15: Tran and Wright and Peleg teach all the limitations of claim 1, above. Tran and Wright and Peleg are silent regarding “comprising searching documents relevant to the set of claims, summarizing each document, and mapping a portion of the document to a claim element.”
Tran ‘994 teaches “comprising searching documents relevant to the set of claims, summarizing each document, and mapping a portion of the document to a claim element (i.e. the system can perform a search of the prior art and locates a combination of elements that do not exist in a single prior art document [Tran ‘994 0115]).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to search and display documents as disclosed by Tran ‘994.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit of “an easy to use, cost-effective, high quality process for generating patent application [Tran ‘994 0009].”
Claim 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tan, in view of Wright, in view of Peleg, in view of Graeser et al., Patent Application Publication number US 20220114340 A1 (hereinafter “Graeser”).
Claim 18: Tran and Wright and Peleg teach all the limitations of claim 1, above. Wright teaches applying a transformer based on prompt-engineering to generate text (see Wright 0021 and 0080, in claim 1, above).
Tran and Wright and Peleg are silent regarding “wherein the prompt-engineering comprises zero-shot Learning, one- shot learning, or few shots learning.”
Graeser teaches “wherein the prompt-engineering comprises zero-shot Learning, one- shot learning, or few shots learning (i.e. one or more pre-trained SentenceBERT models are used to generate embeddings of the patent or patent application data (such as for example an abstract and/or one or more other elements for USPTO patent applications or patents) [Graeser 0094]… A pre-trained model for zero-shot learning or the ensemble of several such models may be used [Graeser 0099] note: Graeser teaches using pre-trained SentenceBERT models to generate a portion of a patent application. Graeser also teaches using pre-trained zero-shot learning models. One of ordinary skill in the art could have substituted one pre-trained model for another, to yield a pre-trained zero-shot learning model that is used to generate portions of a patent application. This yields the predictable result of generating portions of patent application with merely a different model. The rationale to support a conclusion that the claim would have been obvious is that the substitution of one known element for another yields predictable results to one of ordinary skill in the art).”
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention/combination of Tran and Wright and Peleg to include the feature of having the ability to specific models as disclosed by Graeser.
One would have been motivated to do so, before the effective filing date of the invention because it provides the benefit “to improve the performance of the model on a desired document corpus [Graeser 0090].”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chakiat (US 20250077568 A1) listed on 892 is related to generating text, specifically by inputting title information into a text generator.
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/S.S./Examiner, Art Unit 2179
/TUYETLIEN T TRAN/Primary Examiner, Art Unit 2179