DETAILED ACTION
This communication is in response to the Applicant Arguments/Remarks filed 6/9/2025. Claims 1, 3-8, 10-15, 17-23 are pending in the current application.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
In response to the Applicant's Arguments/Remarks filed 11/19/2025, on page 11-12 of the Remarks that “Applicant notes that the pending claims are not "directed to" an abstract idea, at least inasmuch as the claims provide an inventive concept. For example, the claims integrate the alleged exception into a practical application. The practical application includes, for instance, improving the functioning of a computer and/or to another technology or technical field”, “the quantity of bits used to encode search data are limited based on a quantity of unique characters of a query”, “Because the encoding is performed using codes of a shorter length (e.g., based on the smaller quantity of bits), the operation of the processor is improved (i.e., sped up), as the processor is able to ultimately perform a search based on a smaller quantity of bits, which is a faster process than performing the search based on a larger quantity of bits”, please see the cited 101 section below.
In addition, “encoding” and “decoding” have been held by the courts as an entirely abstract idea, See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (claim directed to “abstract idea of encoding and decoding”). Because nearly all of the claims’ limitations recite an abstract idea, any improvement is solely in the abstract idea itself. The encoding and use of the encoded data is entirely abstract, and thus cannot represent any improvement in the functioning of the computer or technology. Even if this encoding and bitwise comparison is more efficient, that holds true when done mentally by pen and paper as well. To the extent the encoding and searching is a form of indexing, this is part of the mental process of searching/matching, similar to Intellectual Ventures v. Eerie, 850 F.3d 1315 (Fed. Cir. 2017) (“invention is drawn to the abstract idea of "creating an index and using that index to search for and retrieve data.")
Applicant's improvement argument is also not an improvement to computer related technology because any improvement is purely in the abstract idea. The claims are considered to recite entirely mental processes. The additional elements are generic computing components. As noted in MPEP 2106.05(a), "It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements." Here, the only improvement applicant argues for is found fully in the abstract idea (judicial exception) alone. That is not an improvement to the functioning of the computer or computer technology.
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, 3-8, 10-15, 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1, 3-8, 10-15, 17-23 fall within the statutory category of an apparatus or system.
Step 2A, Prong One: the claims recite a Judicial Exception.
As per claims 1, 8 and 15, the step of “receive a first subset of characters, out of a query that includes a plurality of characters, wherein the query does not include any characters of a second subset of the plurality of characters, wherein no characters of the first subset of characters are present in the second subset of characters and wherein no characters of the second subset of characters are present in the first subset of characters” in a BRI, is mentally performable with/without the usage of pen and paper as a human mind recognizes characters, words, meanings of the query, concepts performed in the human mind including an observation, evaluation, judgment and where the question/query starts and ends which are not in the query characters/words. Thus, the receiving step is a mental process.
The steps of “identify a first quantity of unique characters in the plurality of characters, wherein the first quantity of unique characters indicates how many different characters are included in the plurality of characters; identify a second quantity of unique characters in query, wherein the second quantity of unique characters indicates how many different characters are included in the query;” in a BRI, are mental processes of concepts performed in the human mind including an observation, evaluation and/or mathematical calculations that purely counting unique characters. Thus, are groupings of abstract ideas.
The steps of “identify a first quantity of bits to represent the first quantity of unique characters of the plurality of characters; identify a second quantity of bits to represent the second quantity of unique characters in the query, wherein the second quantity of bits is fewer than the first quantity of bits;” in a BRI, are mental processes of concepts performed in the human mind including an evaluation or judgement. “encoding” and “decoding” have been held by the courts as an entirely abstract idea, See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (claim directed to “abstract idea of encoding and decoding”). The claim is essentially creating the table 503 in Fig. 5 from the input on the left, and encode that input as in Fig. 6 in the bottom right. But one can identifying and encoding unique characters of a query mentally with pen and paper. Thus, the steps recite mental processes, groupings of abstract ideas.
The step of “generate a plurality of codes that each represent a different character of the unique characters in the query, wherein a length of each code is based on the second quantity of bits determined based on the second quantity of unique characters in the query”; “encode, by the one or more processors, the query and a set of search data using the generated plurality of codes, wherein encoding the query includes generating, by the one or more processors, a first encoded set of characters based on one or more characters in the query and based on the generated plurality of codes, and
wherein encoding the set of search data includes generating, by the one or more processors, a second encoded set of characters based on one or more characters in the set of search data and based on the generated plurality of codes;”
appear to be mentally performable including evaluation, or judgment. Unique characters in each query term/string are determined and encoded into a certain corresponding character coding standard. Thus, inherently the length of each code is based on the number of unique characters in each query term. In addition, “encoding” and “decoding” have been held by the courts as an entirely abstract idea, See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1326 (Fed. Cir. 2017) (claim directed to “abstract idea of encoding and decoding”). The claim is essentially creating the table 503 in Fig. 5 from the input on the left, and encode that input as in Fig. 6 in the bottom right. But in a BRI, one can identifying and encoding unique characters of a query mentally with pen and paper. Thus, the steps recite mental processes, groupings of abstract ideas.
The steps of “determine that the first encoded set of characters matches the second encoded set of characters; and generate a search result, based on the determining, that indicates that the search data includes at least a portion of the query”,
under its BRI, covers performance of the limitations in the mind with the pen and paper that merely generating the search result, i.e. generating what would be returned. To the extent the encoding and searching is a form of indexing, this is part of the mental process of searching/matching, similar to Intellectual Ventures v. Eerie, 850 F.3d 1315 (Fed. Cir. 2017) (“invention is drawn to the abstract idea of "creating an index and using that index to search for and retrieve data.") Accordingly, the steps appear to recite mentally performable processes, as one can mentally do with pen and paper but for the recitation of generic computer components including recited “A device, comprising: one or more processors” and “A non-transitory computer-readable medium, storing a plurality of processor executable instructions”. Not only unique query terms are encoded but also stored in codes, so that the query term codes and the source data codes are matched/compared to determine search result(s) as shown in the matching and generating a search result step.
Each claimed step can be performed in the human mind, with the use of a physical aid such as pen and paper, and thus the steps fall within the mental processes grouping, and claim 1 recites an abstract idea. See MPEP §2106.04(a)(2)(III). Independent claims 8 and 15 recite limitations of commensurate scope. For the reasons stated above for claim 1, it is determined that claims 8 and 15 also recite mental processes, which are an abstract idea.
Nothing in the claim elements preclude the steps from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers the performance of the limitation in the mind 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.
Step 2A, Prong Two: exception is not integrated into a practical application.
The judicial exception is not integrated into a practical application because the additional elements and combination of additional elements do not impose meaningful limits on the judicial exception. In particular, the claims recite the additional elements “A device, comprising: one or more processors” and “A non-transitory computer-readable medium, storing a plurality of processor executable instructions” in claims 1 and 8. The step of and “receive a query…” which is insignificant extra-solution activity under 2106.05(g). The additional elements system/method/computer-readable medium recited at a high-level of generality which do not meaningfully limit the abstract idea, thus, not significantly more than the abstract idea itself. Thus, claims 1, 8 and 15 are directed to abstract ideas.
Step 2B: “Inventive Concept” or “Significantly More”
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Here, said claims do not recite specific limitations (alone or when considered as an ordered combination) that were not well understood, routine, and conventional. More particularly, the claim recites generic computer components (e.g., “A device, comprising: one or more processors” and “A non-transitory computer-readable medium, storing a plurality of processor executable instructions” which is mere apply it under MPEP 2106.05(f), and the step of and “receive a query…” in claims 1, 8 and 15 which is insignificant extra-solution activity under 2106.05(g) and WURC based on the cases for generic data receiving in 2106.05(d). See Alice, 573 U.S. at 226 (“Nearly every computer will include a “communications controller’ and [a] ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); In re TLI Commc’ns LLC Pat. Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (holding generic computer components insufficient to add an inventive concept to an otherwise abstract idea); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network--with no further specification--is not even arguably inventive”).
Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves another technology. The claims do not amount to significantly more than the underlying abstract idea.
Claims 3-7, 10-14, and 17-23 add further limitations which are also directed to an abstract idea. The claims recite steps of “wherein identifying the second quantity of bits to represent the quantity of unique characters in the query includes performing a base two logarithm function on the quantity of unique characters of the query; wherein identifying the second quantity of bits to represent the quantity of unique characters in the query further includes performing a ceiling function on a result of the base two logarithm function on the second quantity of unique characters of the query; wherein the length of each code is further based on one additional code that represents two or more characters of the second subset of characters; perform, prior to identifying the second quantity of unique characters in the query, at least one of: a sanitization operation on the query, a correction operation on the query, or a lemmatization operation on the query; wherein the query includes a plurality of words, and wherein encoding the query includes: generating a set of codes that represents each word of the query; generating a mapping between each code, of the generated plurality of codes, and a corresponding particular word of the plurality of words of the query; wherein the first quantity of bits that represents the first quantify of unique characters in the plurality of characters is at least eight bits, and wherein the second quantity of bits to represent the second quantity of unique characters in the query is fewer than eight bits”.
Said steps can be performed using human mental analyzing and evaluation, and fall into the abstract idea of mental processes, similar to the independent claims and with mathematical calculations in relating to claims 3-4. Accordingly, the claims recite abstract ideas.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Shadmon et al. (US 6804677) teaches at col. 3:54-66: the total number of special codes is, typically, selected to be less than the total number of character codes used for representing single-characters in the input data array. Each special code carries part of the information on a new character. Additional bits, that further identify a new character, are then transmitted in a separate partial character. This process reduces the `cost` (i.e., bandwidth and storage space) of transmitting a new symbol. The process is adaptable anywhere between a no initialization process (e.g., empty initial dictionary) to a full alphabet initialization where each unique character in the alphabet is assigned an entry in the dictionary.
Bakthaatchalam (US 20180114023) teaches in fig. 6: search engine and compression engine; para. 29-31: repeated character strings.
Clark II et al. (US 5455576) teaches at col. 5:25-28: the codeword is then combined with the next input character and again compared with the data entries previously stored in memory. Thus, character strings are assigned codewords according to their address locations in memory.
Chang (US 4500955) teaches in claim 1: “encoding means for matching each of said inputted alphanumeric words with a unique predetermined unitary representation which is independent of any reordering of the serial aggregations of the coded representations comprising an inputted alphanumeric word, said encoding means sequentially examining each coded representation for the characters in an inputted word and branching to a unique location in a tree search logic for each character, each said unique location containing a unique predetermined unitary representation, said encoding means outputting the unique predetermined unitary representation reached after sequentially examining an entire inputted word”.
Kothari (US 9613227) teaches at col. 15:43-56: encoding characters using UTF-8; Fig. 7A: a match in the translation table.
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/LINH BLACK/Examiner, Art Unit 2163 3/29/2026
/TONY MAHMOUDI/Supervisory Patent Examiner, Art Unit 2163
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