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 .
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 8-14 and 18-28 are rejected under 35 U.S.C 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 8-14, 21, 23, 25, and 27 recite a method (process), Claims 18-20, 22, 24, 26, and 28 recite a computer readable medium (manufacture) and therefore fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?):
Referring to claims 8-14, 21, 23, 25, and 27, the claims recite a manner of organizing the transfer of a legal portfolio between law firms, which under its broadest reasonable interpretation covers concepts covered under the Certain Methods of Organizing Human Activity grouping of abstract ideas. Further the claims recite a manner of docketing patent filings based on the analysis of received information, which under its broadest reasonable interpretation covers concepts covered under the Mental Processes grouping of abstract ideas.
Referring to claims 18-20, 22, 24, 26, and 28, the claims recite a manner of organizing legal tasks, which under its broadest reasonable interpretation covers concepts covered under the Certain Methods of Organizing Human Activity grouping of abstract ideas. Further the claims recite a manner of docketing patent filings based on the analysis of received information, which under its broadest reasonable interpretation covers concepts covered under the Mental Processes grouping of abstract ideas
The abstract idea portion of the claims is as follows:
(Claim 8)
A method of transferring a patent portfolio to a law firm, the method comprising: receiving a notification that a receiving firm has been added to a joint customer number associated with a new client; generating a power of attorney for the receiving firm and the new client based on a customer number; receiving an executed power of attorney from the new client; filing the executed power of attorney with a governmental agency to allow the receiving firm to access a plurality of patent filings assigned to the new client; scraping data related to the plurality of patent filings [from a governmental database associated with the governmental agency], wherein scraping data related to the plurality of patent filings comprises collecting documents [from the governmental database]; training a [machine learning[] model on historical patent docketing data, and using the [machine learning] model to: apply annotations to the collected documents, classify the collected documents, predict deadlines associated with the collected documents, and produce an output comprising classifications of the collected documents and deadlines associated with the collected documents; and docketing the plurality of patent filings [in an internal docketing system] at the receiving firm, according to the output produced by the [machine learning] model.
(Claim 18)
[A computer readable medium comprising a memory and a processor, the processor configured to:] receive the customer number associated with a holder of a patent portfolio; generate and execute a power of attorney based on the customer number associated from the holder of the patent portfolio; file the power of attorney with a governmental agency to allow access to a plurality of patent filings in the patent portfolio; scrape data related to the plurality of patent filings in the patent portfolio, wherein data related to the plurality of patent filings comprises documents found [in a governmental database associated with the governmental agency]; train a [machine learning] model on historical patent docketing data, and use the [machine learning] model to: apply annotations to the documents, classify the documents, predict deadlines associated with the documents, and produce an output comprising classifications of the documents and deadlines associated with the documents;
flag deadlines within the output that occur during a transfer period; and docket the plurality of patent filings [in an internal docketing system] according to the output produced by the [machine learning] model.
Where the portions not bracketed recite the abstract idea.
Here the claims are directed to certain methods of organizing human activity in particular managing personal interactions and relationships between people (following rules or instructions) but for the recitation of generic computer components. In the present application concepts reciting (Claim 8) a manner of organizing the transfer of a legal portfolio between law firms (Claim 18) a manner of organizing legal tasks. (See paragraphs 4-5, 45-46, and 60-61).
If a claim limitation, under its broadest reasonable interpretation, covers concepts capable of being performed in managing personal behavior or relationships or interactions between people, it falls under the Certain Methods of Organizing Human Activity grouping of abstract ideas. See MPEP 2106.04.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?):
The examiner views the following as the additional elements:
A governmental database. (See paragraph 52)
An internal docketing system. (See paragraph 47)
An automated or semi-automated patent docketing system. (See paragraph 47)
A patent portfolio transfer tool. (See paragraph 48)
A user interface configured for client access. (See paragraphs 54 and 69)
A user interface configured for originating firm access. (See paragraphs 54 and 69)
A computer readable medium. (See paragraph 113)
A memory. (See paragraph 68)
A processor. (See paragraph 67)
Machine learning. (See paragraphs 31 and 42)
These additional elements are recited at a high-level of generality such that they act to merely “apply” the abstract idea using generic computing components and do not integrate the abstract idea into a practical application. (See MPEP 2106.05 (f))
The combination of these additional elements and/or results oriented steps are no more than mere instructions to apply the exception using generic computing components. (See MPEP 2106.05 (f)) Accordingly, even in combination 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. Therefore, the claim is directed to an abstract idea.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?):
As noted above, the claims as a whole merely describes a method and computer readable medium that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claims add significantly more (i.e. an inventive concept) to the abstract idea and as a result the claims are not patent eligible.
Dependent claims 9-10 and 21-23 further define the abstract idea as identified. Therefore claims 9-10 and 21-23 are considered to be patent ineligible.
Dependent claims 11-12 further define the abstract idea as identified. Additionally, the claim recites an automated or semi-automated docketing system (See paragraph 47) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claims 11-12 are considered to be patent ineligible.
Dependent claims 19-20, 24, and 26 further define the abstract idea as identified. Additionally, the claim recites the processor (See paragraph 48) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claims 19-20, 24 and 26 are considered to be patent ineligible.
Dependent claim 25 further defines the abstract idea as identified. Additionally, the claim recites the governmental database (See paragraph 52) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 25 is considered to be patent ineligible.
Dependent claim 27 further defines the abstract idea as identified. Additionally, the claim recites the internal docketing system (See paragraph 47) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 27 is considered to be patent ineligible.
Dependent claim 28 further defines the abstract idea as identified. Additionally, the claim recites the processor (See paragraph 67) and internal docketing system (See paragraph 47) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 28 is considered to be patent ineligible.
In conclusion the claims do not provide an inventive concept, because the claims do not recite additional elements or a combination of elements that amount to significantly more than the judicial exception of the claims. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed September 4, 2025 have been fully considered.
Applicant’s amendments and arguments, on pages 6-7 of the Remarks, regarding the 101 rejection the Examiner finds unpersuasive.
Applicant argues the claims as amended integrate any alleged abstract idea into a practical application by improving the functioning of a computer-based file transfer system and providing a specific technological solution to the problem of transferring legal dockets between law firms. According to Applicant the automated docketing system provides a more efficient and accurate method of transferring legal files. Applicant contends that the amended limitations require a specific machine-learning based process that improves the functioning of computer-based file transfer systems. According to Applicant claims are specific technical improvements to the alleged abstract idea of docketing the plurality of patent filings. These limitations cannot be performed solely in the human mind or with pen and patent. Therefore, the claims are directed to technological improvement in file transfer systems.
The Examiner respectfully disagrees viewing the additional elements as recited are mere instructions to apply the identified abstract idea using generic computing components. The Examiner does not view the automating the docket transfer process is sufficient “[e]xamples that the courts have indicated may not be sufficient to show an improvement in computer-functionality: … mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, (Fed. Cir. 2017) and “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015). See MPEP 2106.05 (a) and MPEP 2106.05 (f). The Examiner views the improvements related to improving the accuracy of docketing as discussed in the Specification is an improvement to the abstract idea rather than an improvement to technology or other consideration enumerated under MPEP 2106.04 (d).
The Examiner does not view the machine-learning based process is specific but rather further defines the abstract idea in how an individual may be trained on historical patent docketing data so that they may apply annotations to document, classify the documents, predict deadlines associated with the documents, and producing an output with the classifications and deadlines for the documents used in docketing the patent filings. The Examiner views the specific type of model used (machine learning) as mere instructions to apply the abstract idea using generic computing components and do not integrate the abstract idea into a practical application or adds significantly more. See MPEP 2106.05 (f). The Examiner does not view the claims provide a technological improvement to file transfer system but rather provides an improvement to the abstract idea by applying the abstract idea on generic computing components to merely automate the abstract idea.
Therefore, the Examiner has maintained the 101 rejection.
Regarding the Applicant’s amendments and arguments, on pages 7-8 of the Remarks, regarding the 103 rejection the Examiner finds Applicant’s amendments persuasive cancelling the rejected claims. Therefore, the Examiner has withdrawn the 103 rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ndegwa et al. (US 20220292861) – directed to docket analysis.
McRae et al. (US Patent No. 10,453,144) – directed to using a machine learning model to identify case status docket items in an automated docketing system and to leverage the identifications when performing budget estimates.
Bleiweiss et al. (US 20210065320) – directed to collaborative matter management and analysis tool.
THIS ACTION IS MADE FINAL. 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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/M.J.M./
Examiner, Art Unit 3629
/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629