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 .
With regards to claim 1-20, the prior 35 USC 112 rejections are withdrawn in view of applicant amendments.
The applicant’s amendments have necessitated a new grounds of rejection and the following rejections (although citing same set of references) are remapped and combined in a new manner:
Claim(s) 1, 2, 5-12 and 15-20 rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008, cited in applicant submitted IDS) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS)
Claim(s) 3 and 13 rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS) in view of Reisswig (US Application: US 2021/0383067, published: Dec. 9, 2021, filed: Jun. 3, 2020).
Claim(s) 4 and 14 rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS) in view of Priyadarshi et al (US Patent: 10747953, issued: Aug. 18, 2020, filed: Jul. 2, 2018, cited in applicant submitted IDS).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1, 2, 5-12 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008, cited in applicant submitted IDS) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS)
With regards to claim 1. Kahn teaches a method (Fig 3, paragraphs 0147-0148: a computer implemented method using a memory and processor is implemented) for generating a document, comprising:
receiving text comprising at least one independent claim … (paragraphs 0015, 0057, 0115: a patent application with text is received for editing and can include independent claim text);
analyzing the text using a natural language processor (NLP) to generate NLP tokens from the text (paragraphs 0039, 0041, 0046, 0047, 0059: paragraph text is analyzed (interpreted as the claimed ‘text’) and tokens are represented as symbols (such as ‘plunger 18’. );
identifying at least a portion of the NLP tokens for a subsequent analysis (paragraphs 0039, 0041, 0046, 0047, 0059, 0062 and 0063: from the symbol tokens, a portion of the symbol is identified to include marker characters);
generating a substring from the portion of the NLP tokens, wherein the substring is included in the text (paragraphs 0039, 0041, 0046, 0047, 0059, 0062 and 0063: each set of marker characters from a symbol token is extracted as a substring (repeated for other symbols)).
analyzing the substring of the text to generate second NLP tokens (paragraphs 0039, 0041, 0042, 0046, 0047, 0059, 0062 and 0063: the marker characters (such as ‘18’) are analyzed );
merging the second NLP tokens into the NLP tokens (paragraphs 0054, 0073, 0075, Fig 10: the tokens having common reference characters can be linked together for viewing in a same display).
However Kahn does not expressly teach receiving text comprising at least one independent claim; generating unique identifiers associated with at least a portion of NLP tokens; identifying a location in the NLP tokens corresponding to the second NLP tokens based on the unique identifiers; merging the second NLP tokens into the NLP tokens based on the location in the NLP tokens corresponding to the second NLP tokens; generating a patent specification, the patent specification including a description of a flowchart that is generated based on the NLP tokens.
However Schick et al teaches receiving text comprising at least one independent claim; generating [positional/ordered metadata] associated with at least a portion of NLP tokens; identifying a location in the NLP tokens corresponding to the second NLP tokens based on the [positional/ordered metadata]; merging the second NLP tokens into the NLP tokens based on the location in the NLP tokens corresponding to the second NLP tokens; generating a patent specification, the patent specification including a description … based on the NLP tokens (column 6, lines 10-21, column 7, lines 35-67, column 12, lines 45-65, Column 20, lines 15-45, column 24, lines 1-12: text having independent and dependent claims are received and processed such that claim position/claim order is identified with respect to token/text. The token text of an independent claim can include main feature(s) and the dependent claims can include token text identified to be sub-feature(s) of the main feature token(s), such that the sub-features token(s) are merged with their corresponding main-feature token(s) in dependence of claim order (location)/positioning (location). Patent specification is generated based on the data structures having the tokenized text according to the ordered content of the claims (taking into account the grammatical organization of the tokens)).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Kahn’s ability to perform text analysis to generate and merge tokens based on referencing a substring, such that the text analysis would have been for text that includes claim text, the tokens recognized could have been referenced using positional identifier data that is used to additionally reference a location for the merging of tokens, and the merging could have been to merge token content of sub features to a location of their corresponding main feature token(s), as taught by Schick et al. The combination would have allowed Kahn to have generated a data structure that included ordered content derived from patent claims and also to have derived software components described by the patent claim language to create a patent specification . .without human intervention (Schick et al, column 1, lines 15-23).
However, the combination does not expressly teach generating unique identifiers associated with at least a portion of NLP tokens; identifying a location … based on the unique identifiers …; generating a patent specification, the patent specification including a description of a flowchart.
Yet ASI et al teaches generating unique identifiers associated with at least a portion of NLP tokens; identifying a location … based on the unique identifiers … (Fig 3, paragraph 0033 - 0036: a portion of tokens are identified as a specific token set and can be identified/tagged).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Kahn and Schick et al’s ability to generate positional/ordered metadata for NLP tokens, such that the positional/ordered metadata could have been represented using an identifier such as a tag, as taught by ASI et al. The combination would have allowed Kahn and Schick et al to have improved accuracy of document content analysis when determining contextual meaning within the document.
However, the combination does not expressly teach generating a patent specification, the patent specification including a description of a flowchart …
Yet Tran teaches generating a patent specification, the patent specification including a description of a flowchart … (paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments (considered part of patent specification) by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification (i.e. a phrase ‘spark plug’ modifies the root element of ‘gas engine’)).
It would have been obvious to one or ordinary skill in the art before the effective filing of the invention to have modified Kahn, Schick et al’s and ASI et al’s ability to preprocess, tokenize text and refine tokenization of the text to produce a grouping of at least two types of tokens to generate a patent specification, such that a particular aspect of the patent specification can be generated, as also taught by Tran. The combination would have allowed Kahn to have reduced costs through a cost-effective, high-quality process for generating patent application(s) (Tran, paragraph 0009).
With regards to claim 2, which depends on claim 1, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein each NLP token comprises at least one grammatical relationship to another NLP token (as explained in the rejection of claim 1 (column 12, lines 45-65, Schick et al teaches each NLP token can have a grammatical organization/relationship to other tokens), and is rejected under similar rationale.
With regards to claim 5. The method of claim 1, the combination Kahn, Schick et al’s, ASI et al and Tran teaches wherein the portion of the NLP tokens comprises a phrase that modifies a root object associated with a line of the text, as similarly explained in the rejection of claim 1 (Tran was explained to teach that a ‘spark plug’ token is identified to modify the root element ‘the engine’), and is rejected under similar rationale.
With regards to claim 6. The method of claim 1, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches further comprising: generating claim segments for the at least one independent claim from the NLP tokens based on an analysis of the NLP tokens, as similarly explained in the rejection of claim 1 (Tran, paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification), and is rejected under similar rationale.
With regards to claim 7. The method of claim 6, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches further comprising: displaying information corresponding to the claim segments, as similarly explained in the rejection of claim 1 (Tran, paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification), and is rejected under similar rationale.
With regards to claim 8. The method of claim 7, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein a claim segment of the claims segments is linked to a structure that is associated with the at least one independent claim, as similarly explained in the rejection of claim 1 (Tran, paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification), and is rejected under similar rationale.
With regards to claim 9. The method of claim 8, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the patent specification includes at least one sentence including the structure and text generated based on the claim segment, as similarly explained in the rejection of claim 1 (Tran, paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification), and is rejected under similar rationale.
With regards to claim 10. The method of claim 1, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches further comprising: displaying a user interface for interacting with the at least one of the text and the NLP tokens, wherein the patent specification is generated based on interactions within the user interface, as similarly explained in the rejection of claim 1 (Tran, paragraphs 0115 and 0116: tokenized text are used to help generate assistive diagram (descriptive flow chart that diagrams links between tokenized nouns) during a process to generate claim text/segments (considered part of patent specification) by displaying linkage information from dependent(s) to elements/terms in parent claim(s) based upon this relationship/structure being recited in a sentence from a patent disclosure /specification), and is rejected under similar rationale.
With regards to claim 11, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches a non-transitory computer readable medium comprising instructions, the instructions, when executed by a computing system, cause the computing system to: receive text comprising at least one independent claim; analyze the text using a natural language processor (NLP) to generate NLP tokens from the text; generate unique identifiers associated with at least a portion of NLP tokens; identify at least a portion of the NLP tokens for a subsequent analysis; generate a substring from the portion of the NLP tokens, wherein the substring is included in the text; analyze the substring of the text to generate second NLP tokens; identify a location in the NLP tokens corresponding to the second NLP tokens based on the unique identifiers; merge the second NLP tokens into the NLP tokens based on the location in the NLP tokens corresponding to the second NLP tokens; and generate a patent specification, the patent specification including a description of a flowchart that is generated based on the NLP tokens, as similarly explained in the rejection of claim 1, and is rejected under similar rationale.
With regards to claim 12, which depends on claim 11, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein each NLP token comprises at least one grammatical relationship to another NLP token, as similarly explained in the rejection of claim 2, and is rejected under similar rationale.
With regards to claim 15. The computer readable medium of claim 11, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the portion of the NLP tokens comprises a phrase that modifies a root object associated with a line of the text, as similarly explained in the rejection of claim 5, and is rejected under similar rationale.
With regards to claim 16. The computer readable medium of claim 11, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the computer readable medium further comprises instructions that, when executed by the computing system, cause the computing system to: generate claim segments for the at least one independent claim from the NLP tokens based on an analysis of the NLP tokens, as similarly explained in the rejection of claim 6, and is rejected under similar rationale.
With regards to claim 17. The computer readable medium of claim 16, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the computer readable medium further comprises instructions that, when executed by the computing system, cause the computing system to: display information corresponding to the claim segments, as similarly explained in the rejection of claim 7, and is rejected under similar rationale.
With regards to claim 18. The computer readable medium of claim 17, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein a claim segment of the claim segments is linked to a structure that is associated with the at least one independent claim, as similarly explained in the rejection of claim 8, and is rejected under similar rationale.
With regards to claim 19. The computer readable medium of claim 18, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the patent specification includes at least one sentence including the structure and text generated based on the claim segment, as similarly explained in the rejection of claim 9, and is rejected under similar rationale.
With regards to claim 20. The computer readable medium of claim 11, the combination of Kahn, Schick et al’s, ASI et al and Tran teaches wherein the computer readable medium further comprises instructions that, when executed by the computing system, cause the computing system to: display a user interface for interacting with the at least one of the text and the NLP tokens, wherein the patent specification is generated based on interactions within the user interface, as similarly explained in the rejection of claim 10, and is rejected under similar rationale.
Claim(s) 3 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS) in view of Reisswig (US Application: US 2021/0383067, published: Dec. 9, 2021, filed: Jun. 3, 2020).
With regards to claim 3. The method of claim 2, the combination of Kahn, Schick et al’s, ASI et al, and Tran teaches wherein the unique identifier, as similarly explained in the rejection of claim 1, and is rejected under similar rationale.
However, the combination does not expressly teach … wherein the unique identifier includes at least one of a claim number, a line identifier, and a token position on associated with the line identifier. .
Yet Reisswig teaches wherein the unique identifier includes at least one of a claim number, a line identifier, and a token position on associated with the line identifier (paragraph 0040: a positional identification is generated via positional encoding of a token in a portion of document text , which includes as part of the encoding, a token position associated with a line number).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Kahn, Schick et al’s, ASI et al and Tran ability to process claim text (having lines) and perform merging of the second NLP tokens with respect to relationship(s) to the other tokens using identifiers (identifiers associated with positioned/ordered claim text tokens), such that a type of identifier value such as a line number could have been recognized as a positional reference as taught by Reisswig. The combination would have allowed Kahn, Schick et al’s, ASI et al and Tran to have allowed for structure recognition in a text document to glean value/text associated with tokens.
With regards to claim 13. The computer readable medium of claim 12, the combination of Kahn, Schick et al’s, ASI et al, Tran and Reisswig teaches wherein the unique identifier includes at least one of a claim number, a line identifier, and a token position on associated with the line identifier, as similarly explained in the rejection of claim 3 and is rejected under similar rationale.
Claim(s) 4 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kahn (US Application: US 2009/0210828, published: Aug. 20, 2009, filed: Feb. 15, 2008) in view of Schick et al (US Patent: 10417341, issued: Sep. 17, 2019, filed: Feb, 9, 2018), in view of ASI et al (US Application: 20190362713, published: Nov. 28, 2019, filed: May 25, 2018) in view of Tran (US Application: US 2013/0317994, published: Nov. 28, 2013, filed: Nov. 13, 2012, cited in applicant submitted IDS) in view of Priyadarshi et al (US Patent: 10747953, issued: Aug. 18, 2020, filed: Jul. 2, 2018, cited in applicant submitted IDS).
With regards to claim 4. The method of claim 1, the combination of Kahn, Schick et al’s, ASI et al, and Tran teaches further comprising: analyzing …. The text to form a relationship …. , wherein the patent specification is generated based on the relationship … , as similarly explained in the rejection of claim 1 (claim text was explained to be processed and tokenized , such that second tokens are merged with first tokens based upon a merge relationship), and is rejected under similar rationale.
However, the combination of does not expressly teach analyzing whitespace associated with the text to form a relationship between at least two lines of text separated by a line break, wherein the patent specification is generated based on the relationship of the at least two lines.
Yet Priyadarshi et al teaches analyzing whitespace associated with the text to form a relationship between at least two lines of text separated by a line break, wherein the patent specification is generated based on the relationship of the at least two lines (column 3, lines 40-50: white space such as line spacing (interpreted as spacing between two lines/text) is analyzed and identified from the text as a specific formatting relationship).
It would have been obvious to one of ordinary skill in the art before the effective filing of the invention to have modified Kahn, Schick et al’s, ASI et al and Tran’s ability to analyze claim text to help collect/glean patent information and assist in patent specification generation, such that line spacing is taken into account as part of collection of patent information, as taught by Priyadarshi et al. The combination would have allowed Kahn, Tran, and DeVries to have helped automatically and efficiently created a patent application by identifying formatting features and deriving a document plan using the … formatting features (Priyadarshi et al, column 1, lines 45-65).
With regards to claim 14. The computer readable medium of claim 11, the combination of Kahn, Schick et al’s, ASI et al, Tran, Priyadarshi et al teaches wherein the computer readable medium further comprises instructions that, when executed by the computing system, cause the computing system to: analyze whitespace associated with the text to form a relationship between at least two lines of text separated by a line break, wherein the patent specification is generated based on the relationship of the at least two lines, as similarly explained in the rejection of claim 4, and is rejected under similar rationale.
Response to Arguments
Applicant's arguments filed 03/30/2026 have been fully considered but they are not persuasive.
With regards to claim1, the applicant argues that Kahn does not teach “generating a substring from the portion of NLP tokens, wherein the substring is included in the text” while Kah is mapped to ‘stemming’. However, the applicant’s amendments have necessitated a new grounds of rejection and Kahn is now newly mapped to address the new scope of claim 1. More specifically, Kahn teaches in paragraphs 0039, 0041, 0046, 0047, 0059, 0062 and 0063, that each set of marker characters from a symbol token is extracted as a substring (repeated for other symbols)) and the marker characters (such as ‘18’) included in the text are analyzed/extracted for subsequent reference.
With regards to claim 11, the applicant argues it is rejected under similar rationale as the arguments presented by the applicant for claim 1. However, this argument is not persuasive since claim 1 has been shown/explained to be rejected above.
With regards to the dependent claims, the applicant argues they are allowable by virtue of their dependence upon their independent claims (claims 1 or 11).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILSON W TSUI whose telephone number is (571)272-7596. The examiner can normally be reached Monday - Friday 9 am -6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam Queler can be reached at (571) 272-4140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/WILSON W TSUI/Primary Examiner, Art Unit 2172
Prosecution Insights