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 .
DETAILED ACTION
The action is in response to claims dated 6/15/2026.
Claims pending in the case: 1-20
Claims canceled: 21-28
Claim Objections
Claim 1 objected to because of the following informalities:
“a plurality of historical value case validation amounts” should read “a plurality of historical value case valuation amounts” .
Appropriate correction is requested.
Claim 2 objected to because of the following informalities:
“by comparing the case record against the predefined data format but absent the case record” should read “by comparing the case record against the predefined data format but absent from the case record” .
Appropriate correction is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 2-3 and 12-13 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 and 12 recites “identify missing content data based on the case record, the missing content data being content data identified by comparing the case record against the predefined data format but absent the case record”. The specification does not mention comparing of case record with anything. The specification in paragraph [61] recites “ML techniques, may identify information (e.g., content data) not currently included in the case record that is necessary and/or helpful for predicting an outcome of the corresponding case”. The specification does not appear to indicate what may be considered as “necessary and/or helpful for predicting an outcome” and therefore the specification does not indicate how missing content data is being identified. The applicant is requested to identify the paragraphs and lines in the specification that supports this limitation.
All claims dependent on this claim are also rejected under 35 U.S.C. 112(a) due to the virtue of their respective direct and indirect dependencies.
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.
Claim(s) 1-20 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 pre-AIA the applicant regards as the invention.
Claim(s) 1, 11 and 20 in the relevant part read: “execute a machine learning model configured to output a predicted case valuation”. Based on the claim language, it is unclear what is being referred to as “case valuation”. The specification does appear to use this term and there is no definition as to what is to be considered as “case valuation”. It is unclear what the model is doing and what its output is. As such, a person of reasonable skill in the art would not be apprised of the metes and bounds of the invention.
For the purpose of examination, the limitation is interpreted as settlement values being evaluated by a model.
All claims dependent on this/these claim(s) are also rejected under 35 U.S.C. 112(b) due to the virtue of their respective direct and indirect dependencies.
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.
Claim(s) 1, 7-8, 11, 17-18, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN 114519508 – please refer to attached for claim mapping) in view of Liao (US 20220188674) and Moretti (US 20190180395).
Moretti not used in the prior office action.
Regarding Claim 1, Xu teaches, An analytics computing device comprising a processor in communication with a memory, the processor configured to:
store, in the memory, a plurality of documents in association with a case identifier (Xu: Pg. 3: [2-3]: use legal documents of a case);
electronically extract content data from the plurality of documents using a … analysis engine (Xu: Pg. 3: [2], Pg. 4 [1]: extract document content);
generate a case record in the memory including the extracted content data associated with the case identifier, the case record having a predefined data format (Xu: Pg. 3: [5], Pg. 6 [4-5]: generate a data set with case record);
execute a machine learning model configured to output a predicted case value … by inputting at least a portion of the extracted content data included in the case record into the machine learning model, the machine learning model trained using a plurality of historical case records and a plurality of historical case validation amount associated with the historical case records, the historical case records including historical content data and having the predefined data format (Xu: Pg. 11: [1]: obtain a score representing probability of client defaulting, Pg. 6 [2, 4]: use historical data for evaluation); and
cause the predicted case value … outputted by the machine learning model to be displayed (Xu: Pg. 11: [1]: obtain a score representing probability of client defaulting (valuation of a case);
However, Xu does not specifically teach,
using semantic analysis;
case valuation amount;
Liao teaches, using semantic analysis (Liao [18-19]: semantic analysis used to analyze data in the machine learning process);
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Xu and Liao because the combination would enable using semantic analysis for feature extraction in input data to a model. One of ordinary skill in the art would have been motivated to combine the teachings because the combination would improve time by using semantic analysis for data analysis as is common in the art;
Moretti further teaches,
case valuation amount (Moretti: [30, 34, 40]: predict a settlement amount based on the case information);
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Xu, Liao and Moretti because the combination would enable using a model to predict settlement amount in a case. One of ordinary skill in the art would have been motivated to combine the teachings because the combination would improve efficiency by automating the process of determining settlement amounts in cases with disputes.
Regarding claim 7, Xu, Liao and Moretti teach the invention as claimed in claim 1 above and, wherein the processor is further configured to provide user interface data to one or more user computing devices, the user interface data configured to cause the one or more user computing devices to display a user interface (Xu: Pg. 4 [4]: provide risk assessment to user) (Liao: [32, 55]: provide data to user on user interface).
Regarding claim 8, Xu, Liao and Moretti teach the invention as claimed in claim 7 above and, wherein the user interface is configured to display the predicted value amount output by the machine learning model (Xu: Pg. 4 [4], PG. 11 [1]: provide risk assessment value to user) (Liao: [32, 55]: provide data to user on user interface).
Regarding Claim(s) 11 and 20, this/these claim(s) is/are similar in scope as claim(s) 1. Therefore, this/these claim(s) is/are rejected under the same rationale.
Regarding Claim(s) 17-18, this/these claim(s) is/are similar in scope as claim(s) 7-8 respectively. Therefore, this/these claim(s) is/are rejected under the same rationale.
Claim(s) 2-3, 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN 114519508 – please refer to attached for claim mapping), Liao (US 20220188674) and Moretti (US 20190180395) in view of Patel (US 20200058381).
Regarding claim 2, Xu, Liao and Moretti teach the invention as claimed in claim 1 above and,
wherein the processor is further configured to identify … content data based on the case record, the … content (Liao: [20, 43]: generate explanation of the confidence score (indication of missing data));
However, Xu, Liao and Moretti does not specifically teach, identify missing content data;
Patel teaches, identify missing content data by comparing the case record against the predefined data format to identify content data categories present in the predefined data format but absent from the case record (Patel: [163, 165]: analyze document and identify content issues; [92, 147-148]: missing content);
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Xu, Liao, Moretti and Patel because the combination would enable using a model to identify content issues and generate and alert for the issue. One of ordinary skill in the art would have been motivated to combine the teachings because the combination facilitates recording and executing of decisions using one centralized system (see Patel [1]).
Please refer to the 112 rejections above.
Regarding claim 3, Xu, Liao, Moretti and Patel teach the invention as claimed in claim 2 above and, wherein the processor is further configured to: generate an electronic request for the missing content data; receive a response to the electronic request including the missing content data; parse the response to extract the missing content data; and update the case record to include the extracted missing content data (Patel: [163, 165]: analyze document and identify content issues; [92, 147-148]: missing content may be addresses using rules to generate alerts and requests) .
Regarding Claim(s) 12-13, this/these claim(s) is/are similar in scope as claim(s) 1-2 respectively. Therefore, this/these claim(s) is/are rejected under the same rationale.
Claim(s) 4-6, 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN 114519508 – please refer to attached for claim mapping) in view of Liao (US 20220188674) and Moretti (US 20190180395) and in further view of Kang (US 20180285744).
Regarding claim 4, Xu, Liao and Moretti teach the invention as claimed in claim 1 above and, Kang further teaches, wherein the processor is further configured to extract text data from the plurality of documents using optical character recognition (Kang: [15, 45]: OCR may be used for data processing);
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Xu, Liao, Moretti and Kang because the combination would enable using OCT for information extraction. One of ordinary skill in the art would have been motivated to combine the teachings because the combination facilitates using known and established processes in the art like OCR to extract information form raw data and generate a knowledge base of usable data (see Kang [2]).
Regarding claim 5, Xu, Liao, Moretti and Kang teach the invention as claimed in claim 4 above and, wherein the processor is further configured to extract content data from the text data using machine learning techniques (Kang: [15, 44, 46-47]: context extraction from speech data which may be done using machine learning).
Regarding claim 6, Xu, Liao and Moretti teach the invention as claimed in claim 1 above and, Kang further teaches, wherein the processor is further configured to: record one or more telephone calls; and extract content data from the recorded one or more telephone calls (Kang: [15, 44, 46-47]: content extraction from recorded speech information);
The same motivation to combine stated above applies.
Regarding Claim(s) 14-16, this/these claim(s) is/are similar in scope as claim(s) 4-6 respectively. Therefore, this/these claim(s) is/are rejected under the same rationale.
Claim(s) 9-10, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xu (CN 114519508 – please refer to attached for claim mapping) in view of Liao (US 20220188674) and Moretti (US 20190180395) in further view of Dolan (US 20210049552).
Regarding claim 9, Xu, Liao and Moretti teach the invention as claimed in claim 7 above and, Dolan further teaches, wherein the user interface is configured to prompt a user to upload at least one of the plurality of documents (Dolan: [56]: prompt for a document);
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Xu, Liao, Moretti and Dolan because the combination would enable using an interface for displaying and managing documents as is common in the art.
Regarding claim 10, Xu, Liao and Moretti teach the invention as claimed in claim 7 above and, Dolan further teaches, wherein the user interface is configured to display at least one of the plurality of documents (Dolan: [28-29]: interface displaying documents);
The same motivation to combine stated above applies.
Regarding Claim(s) 19, this/these claim(s) is/are similar in scope as claim(s) 9. Therefore, this/these claim(s) is/are rejected under the same rationale.
Response to Arguments
Applicants’ amendments to the claims have been fully considered. However the amendment is not supported by the specification as explained in the rejection above. The 112 rejections are respectfully maintained.
In response to 112b rejection for claims 2 and 12, the applicant highlights specification paragraphs [60-61] in support of the amendments. However these paragraphs [60] discloses what a case record may be [61] “analytics computing device 102, using, for example, ML techniques, may identify information (e.g., content data) not currently included in the case record that is necessary and/or helpful for predicting an outcome of the corresponding case”. The examiner was unable to find any explanation on how such missing information may be identified. The applicant’s explanation is not supported in the specification as the specification does not mention any comparison as argued upon by the applicant. The limitation in the claim must have support in the specification.
Applicants’ amendments to claims 1, 11 and 20 have been fully considered but the amendment introduces a term not used or defined in the specification. These rejections are therefore maintained.
Applicants’ prior art arguments have been fully considered but since they pertain to the amended sections of the claim, they are considered moot in view of the new grounds of rejection presented above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure in attached 892.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANDRITA BRAHMACHARI whose telephone number is (571)272-9735. The examiner can normally be reached Monday to Friday, 11 am to 8 pm EST.
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, Tamara Kyle can be reached at 571 272 4241. 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.
/Mandrita Brahmachari/Primary Examiner, Art Unit 2144
Prosecution Insights