DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This Office Action has been issued in response to Applicant’s Communication of amended application S/N 18/178,626 filed on August 28, 2025. Claims 1, 3 to 9, and 12 to 14 are currently pending with the application.
Examiner’s Note
Examiner respectfully points out that claims 1, 13, and 14 recite the contingent limitations “upon determining that a number of search results… acquire…” (see claim 1, line 6; claims 13 and 14 recite same limitations) and “upon determining that the number of search results… output” (see claim 1, line 4 at page 4; claims 13 and 14 recite same limitations). The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the conditions precedent are not met (See MPEP 2111.04(II)). Therefore, since claim 13 is a method claim, the contingent limitations recited above are not required in claim 13. Nonetheless, and in the interest of compact prosecution, all the limitations have been considered as if they are positively recited, however, proper corrections are required.
Claim Objections
Claims 1, 13, and 14 are objected to because of the following informalities:
Claim 1 recites the limitations “by referring to a table that the content information…” in line 11, which appears to contain a typographical error, and that should read “by referring to a table in which the content information…”. Same rationale applies to claims 13 and 14, since they recite similar limitations. Appropriate corrections are required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3 to 9, and 12 to 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 13, and 14 recite performing determinations, specifying words, and processing a query.
The limitations of performing determinations, which specifically recite “determining that a number of search results from the first natural text search is equal to or greater than a threshold”, and “determining that the number of search results from the first natural text search is less than the threshold”, although not positively recited in the claims, as presently presented, are processes that, under its broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting “by a processor”, nothing in the claim element precludes the steps from practically being performed in a human mind. For example, but for the “by a processor” language, “determining”, in the context of this claim encompasses the user mentally, with the aid of pen and paper, comparing a number representing the amount of search results to a threshold and based on the comparison, determining if the number is equal, higher, or lower than the threshold.
The limitation of specifying words, which specifically recite “specify a word or a sentence by referring to a table that the content information and the word or the sentence are defined in association with each other”, is a process that, under its broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting “by a processor”, nothing in the claim element precludes the steps from practically being performed in a human mind. For example, but for the “by a processor” language, “specify”, in the context of this claim encompasses the user mentally, with the aid of pen and paper, reading a table that is written down in a sheet of paper and identifying words or sentences associated with content.
The limitation of processing the query, which specifically recite “process the query to be converted into a processed query based on the specified word or the specified sentence from the table”, is a process that, under its broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting “by a processor”, nothing in the claim element precludes the steps from practically being performed in a human mind. For example, but for the “by a processor” language, “processing”, in the context of this claim encompasses the user mentally, with the aid of pen and paper, modifying or supplementing a question with the words or sentences specified in the previous step. If a claim limitation, under its broadest reasonable interpretation, covers mental processes but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements – “receive an input of a query for a natural text search from a user”, “receive an execution instruction for the natural text search from the user”, “conduct a first natural text search with the query”, “acquire content information indicating content in which the user refers to in issuing the execution instruction”, “conduct a second natural text search with the processed query”, “output a result of the second natural text search as a result of the natural text search requested from the user”, “output a result of the first natural text search as a result of the natural text search requested from the user”, an apparatus, a processor, and a non-transitory computer readable medium.
Continuing with the analysis of the additional elements, the limitations “receive an input of a query for a natural text search from a user”, “receive an execution instruction for the natural text search from the user”, “acquire content information indicating content in which the user refers to in issuing the execution instruction”, “output a result of the second natural text search as a result of the natural text search requested from the user”, and “output a result of the first natural text search as a result of the natural text search requested from the user” amount to data-gathering steps which is considered to be insignificant extra-solution activity (See MPEP 2106.05(g)).
Continuing with the analysis of the additional elements, the limitations “conduct a first natural text search with the query”, and “conduct a second natural text search with the processed query” are recited at a high-level of generality, with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, and is equivalent to merely saying “applying it”. The apparatus, processor, and non-transitory computer readable medium in these steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The insignificant extra-solution activity identified above, which include the data gathering steps, is recognized by the courts as well-understood, routine, and conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d)(II)(i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)). The claims are not patent eligible.
Claim 3 is dependent on claim 1 and includes all the limitations of claim 1. Therefore, claim 3 recites the same abstract idea of claim 1. The claim recites the additional limitations of “the processed query is the query with the specified word or the specified sentence added thereto”, which are limitations that are further elaborating on the abstract idea, and therefore, do not amount to significantly more. Same rationale applies to claims 3 to 7, since they recite limitations that similarly amount to elements that are further elaborating on the abstract idea.
Claim 8 is dependent on claim 1 and includes all the limitations of claim 1. Therefore, claim 8 recites the same abstract idea of claim 1. The claim recites the additional limitation of “display the processed query for confirmation by the user before conducting the second natural text search”, which amount to data gathering and data presentation steps, and which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)), and recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05(d)(II)(i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); (v) Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93)). Therefore, the limitations do not amount to significantly more than the abstract idea.
Same rationale applies to claim 12, since it recites similar limitations.
Additionally, the claims do not include a requirement of anything other than conventional, generic computer technology for executing the abstract idea, and therefore, do not amount to significantly more than the abstract idea.
Claims 1, 3 to 9, and 12 to 14 are therefore not drawn to eligible subject matter as they are directed to an abstract idea without significantly more.
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.
Claims 1 to 5, 8, 9, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kraft et al. (U.S. Publication No. 2013/0024474) hereinafter Kraft, and further in view of DeMaris et al. (U.S. Publication No. 2009/0259624) hereinafter DeMaris.
As to claim 1:
Kraft discloses:
An information processing apparatus comprising: a processor configured to:
receive an input of a query for a natural text search from a user [Paragraph 0014 teaches receiving a query from the user via a query entry area; Paragraph 0067 teaches user may enter a query];
receive an execution instruction for the natural text search from the user [Paragraph 0018 teaches receiving submission of the query for execution, upon the user operating the submission control element to submit the query; Paragraph 0067 teaches user may enter a query and activate a submit control];
conduct a first natural text search with the query [Paragraph 0129 teaches executing a search using the user’s query terms, without additional context keywords, to generate hits];
acquire content information indicating content in which the user refers to in issuing the execution instruction [Paragraph 0010 teaches using contextual information associated with a page or other document that a user is viewing when a query is entered; Paragraph 0054 teaches generating context vectors based on content the user is currently viewing at the time a query is entered; Paragraph 0068 teaches context vector includes one or more terms or category labels representative of content];
specify a word or a sentence by referring to a table that the content information and the word or the sentence are defined in association with each other [Paragraph 0084 teaches context client transmits text and query terms to context module, which uses any combination of dictionaries for generating a context vector, which is further provided for use in the query processing; Paragraph 0078 teaches context module communicates with a number of dictionaries, that may be implemented as databases or other data stores in which information related to a word or phrase is retrievable by a lookup operation, therefore, a table defining an association between content information and words or phrases; Paragraph 0126 teaches extracting one or more context keywords to supplement the user keywords];
process the query to be converted into a processed query based on the specified word or the specified sentence [Paragraph 0054 teaches using context vector data to supplement the query entered by the user].
Kraft does not appear to expressly disclose upon determining that a number of search results from the first natural text search is equal to or greater than a threshold: process the query to be converted into a processed query; conduct a second text search with the processed query; and output a result of the second text search as a result of the text search requested from the user; and upon determining that the number of search results from the first text search is less than the threshold, output a result of the first text search as a result of the text search requested from the user.
DeMaris discloses:
upon determining that a number of search results from the first natural text search is equal to or greater than a threshold: process the query to be converted into a processed query [Paragraph 0016 teaches if the query returns results that exceed a threshold, rewriting the query; Paragraph 0039 teaches detecting that the original query retrieved an excessive number of items in the original result set, based on the threshold condition; Paragraph 0040 teaches in response to the detecting that the result set exceeds the threshold, rewriting the original query];
conduct a second text search with the processed query [Paragraph 0040 teaches generating a new result set by executing the new rewritten query]; and
output a result of the second text search as a result of the text search requested from the user [Paragraph 0040 teaches returning the new result set of the new rewritten query]; and
upon determining that the number of search results from the first text search is less than the threshold, output a result of the first text search as a result of the text search requested from the user [Paragraph 0025 teaches if the original query returns a result set such that the number of items does not exceed the threshold number of items, the result set is returned, therefore, outputted].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the cited references and modify the invention as taught by Kraft, by upon determining that a number of search results from the first natural text search is equal to or greater than a threshold: process the query to be converted into a processed query; conduct a second text search with the processed query; and output a result of the second text search as a result of the text search requested from the user; and upon determining that the number of search results from the first text search is less than the threshold, output a result of the first text search as a result of the text search requested from the user, as taught by DeMaris [Paragraphs 0016, 0025, 0039, 0040], because both applications are directed to improving search results; converting the query upon detecting that a number of search results exceed a threshold enables the improvement of application performance, positively impacting operations and user experience (See DeMaris Para [0001]).
Same rationale applies to claims 13 and 14, since they recite similar limitations, and are therefore, similarly rejected.
As to claim 3:
Kraft discloses:
the processed query is the query with the specified word or the specified sentence added thereto [Paragraph 0071 teaches the user query is modified by adding one or more keywords selected from the context vector].
As to claim 4:
Kraft discloses:
the processed query is a new query based on the specified word or the specified sentence [Paragraph 0071 teaches the user query is modified by adding one or more keywords selected from the context vector, therefore, a new query is created based on the extracted words and the user query].
As to claim 5:
Kraft discloses:
specify a plurality of words or sentences from the table with respective scores and extract a predetermined number of the words or the sentences in descending order of the respective scores [Paragraph 0060 teaches context vector for text content may include keywords such as terms (e.g., words or phrases) that appear in the content, and each such term may have an associated frequency count reflecting how many times that term occurs in the content; Paragraph 0068 teaches context vector includes a list of terms that appear in content, and additional information associated with each term, including term frequency, a document frequency, a weight, etc.; Paragraph 0094 teaches sorting the tokens according to a suitable criteria, such as a frequency of occurrence of the term in the content (representing the score), and selecting the most frequently occurring tokens, where the number of tokens selected may be limited, e.g., to some integer K].
As to claim 8:
Kraft as modified by DeMaris discloses:
display the processed query for confirmation by the user before conducting the second natural text search [Paragraph 0016 teaches in the manual instance, the system can suggest
and present possible criteria for the user for the rewritten query].
As to claim 9:
Kraft discloses:
display a plurality of processed queries; receive from the user, a selection of one processed query among the plurality of the processed queries; and conduct the second natural text search using the selected processed query [Paragraph 0128 teaches displaying both the user’s original query and the context keywords that were added to the search query, and presenting them using an interactive form via which the user can modify the query, the context words, or both, and submit the modified query, hence, conducting the search using the selected processed query].
Claims 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kraft et al. (U.S. Publication No. 2013/0024474) hereinafter Kraft, in view of DeMaris et al. (U.S. Publication No. 2009/0259624) hereinafter DeMaris, and further in view of HELVIK et al. (U.S. Publication No. 2022/0284031) hereinafter Helvik.
As to claim 6:
Kraft discloses all the limitations as set forth in the rejections of claim 1 above, but does not appear to expressly disclose workflow information that the user was referring to when issuing the execution instruction.
Helvik discloses:
the content information is workflow information that the user was referring to when issuing the execution instruction [Paragraph 0026 teaches determining user categories, appropriate lifecycle stages, and appropriate activity levels for the documents corresponding to the user; Paragraph 0035 teaches determining lifecycle stages and activity levels; Paragraph 0039 teaches retrieving the information to provide the relevant contextual information for the search].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the cited references and modify the invention as taught by Kraft, by incorporating workflow information that the user was referring to when issuing the execution instruction, as taught by Helvik [Paragraphs 0026, 0035, 0039], because both applications are directed to improving search results; extracting workflow or lifecycle information of the user, including a category or properties of the user enables to provide more relevant search results to the user, thereby improving the user’s experience (See Helvik Paras [0018], [0019]).
As to claim 7:
Kraft as modified by Helvik further discloses:
wherein the content information indicates a case and a phase of the workflow information [Paragraph 0026 teaches determining user categories, appropriate lifecycle stages, and appropriate activity levels for the documents corresponding to the user; Paragraph 0035 teaches determining lifecycle stages and activity levels; Paragraph 0039 teaches retrieving the information to provide the relevant contextual information for the search].
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kraft et al. (U.S. Publication No. 2013/0024474) hereinafter Kraft, in view of DeMaris et al. (U.S. Publication No. 2009/0259624) hereinafter DeMaris, and further in view of Halabi et al. (U.S. Patent No. 11,526,512) hereinafter Halabi.
As to claim 12:
Kraft discloses all the limitations as set forth in the rejections of claim 1 above, but does not appear to expressly disclose determine whether a number of predetermined keywords included in the search results from the first natural text search is equal to or greater than a keyword threshold; and upon determining that the number of the predetermined keywords is less than the keyword threshold, conduct the second natural text search with the processed query and output the result of the second natural text search as the result of the natural text search requested from the user.
Halabi discloses:
determine whether a number of predetermined keywords included in the search results from the first natural text search is equal to or greater than a keyword threshold [Column 2, lines 63 to 67 teach that query performance predictor can determine whether the query is low-performing based on the relevancy of search results, by determining that the results do not identify any particular item in the query; Column 3, lines 3 to 8 disclose query performance predictor provides a numerical score that is representative of query performance, and may indicate whether a given query satisfies or does not satisfy a performance threshold]; and
upon determining that the number of the predetermined keywords is less than the keyword threshold, conduct the second natural text search with the processed query and output the result of the second natural text search as the result of the natural text search requested from the user [Column 2, lines 63 to 67 teach determining that the results do not identify any particular item in the query; Column 6, lines 14 to 17 teach determine that the query performance prediction does not satisfy a threshold, and may thus determine that an alternate query should be generated; Column 9, lines 19 to 27 teach upon determining that the query performance prediction does not satisfy the threshold, obtaining an alternative query, submitting the alternative query to the search engine, and processing and returning search results].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the cited references and modify the invention as taught by Kraft, by determining whether a number of predetermined keywords included in the search results from the first natural text search is equal to or greater than a keyword threshold; and upon determining that the number of the predetermined keywords is less than the keyword threshold, conduct the second natural text search with the processed query and output the result of the second natural text search as the result of the natural text search requested from the user, as taught by Halabi [Columns 2, 3, 6], because both applications are directed to improving search results; determining low-performing queries using thresholds enables the identification of a requirement for alternative queries that more likely will produce search results that accurately reflect the user’s intentions, while improving the performance of the services and resource use (See Halabi [Column 2, lines 39 to 55]).
Response to Arguments
The following is in response to arguments filed on August 28, 2025. Arguments have been carefully and respectfully considered.
Claim Rejections - 35 USC § 101
Applicant’s arguments have been carefully and respectfully considered, but are not persuasive. In regards to claim 1, Applicant argues that “performing the first natural text search, converting the original query from the user into a processed query by referring to a table, and performing the second natural text search with the processed query, etc., cannot be practically performed in the human mind”.
In response to the preceding argument, Examiner respectfully points out that, as further described in the rejections above, the “performing” the first and second text search limitations are additional limitations, and are recited at a high-level of generality, with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, and is equivalent to merely saying “applying it”. The converting the query limitation, as presently presented, under its broadest reasonable interpretation covers performance of the limitation in the mind, but for the recitation of generic computer components, since nothing in the claim element precludes the steps from practically being performed in a human mind. For example, in the context of this claim, encompasses the user mentally, with the aid of pen and paper modifying a question by reading a table from a sheet of paper, and adding terms from the table into the question.
In regards to claim 1, Applicant further argues that “even if the claim recites an abstract idea of mental processes, the above-quoted claim limitations clearly integrate any mental processes into a practical application of computer(s) executing a natural text search based on a query under Step 2A, Prong Two. Even if the claim is not integrated into a practical application, the limitations add "significantly more" beyond the abstract idea of mental processes to render the claim eligible under Step 2B”.
In response to the preceding argument, Examiner respectfully submits that it is not clear how the above-quoted limitations integrate the mental process into a practical application, or add significantly more. As presently presented, the claims are directed to an abstract idea without significantly more. 101 Rejections are hereby sustained.
Claim Rejections - 35 USC § 103
Applicant’s arguments have been carefully and respectfully considered, but are moot in view of new grounds of rejections, as necessitated by the amendments.
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.
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/RAQUEL PEREZ-ARROYO/Primary Examiner, Art Unit 2169