DETAILED ACTION
The present application, filed on 6/12/2023 is being examined under the AIA first inventor to file provisions.
The following is a FINAL Office Action in response to Applicant’s amendments filed on 4/08/2026.
a. Claims 1, 14, 18 are amended
b. Claims 2, 4, 9, 13, 15, 17, 22, 26 are cancelled
c. Claims 27-34 are new
Overall, claims 1, 3, 5-8, 10-12, 14, 16, 18-21, 23-25, 27-34 are pending and have been considered below.
Claim Rejections - 35 USC § 101
35 USC 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, 5-8, 10-12, 14, 16, 18-21, 23-25, 27-34 are rejected under 35 USC 101 because the claimed invention is not directed to patent eligible subject matter. The claimed matter is directed to a judicial exception, i.e. an abstract idea, not integrated into a practical application, and without significantly more.
Per Step 1 of the multi-step eligibility analysis, claims 1-13 are directed to a system and claims 14-26 are directed to a computer implemented method.
Thus, on its face, each independent claim and the associated dependent claims are directed to a statutory category of invention.
[INDEPENDENT CLAIMS]
Per Step 2A.1. Independent claim 1, (which is representative of independent claims 14) is rejected under 35 USC 101 because the independent claim is directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application.
The limitations of the independent claim 1 (which is representative of independent claims 14) recite an abstract idea, shown in bold below:
[A] A computer system for generating parallel synthetic training data for a machine learning model, the system comprising a server computing device having a memory that stores computer-executable instructions and a processor
[B] filter a baseline dataset to remove one or more baseline sentences determined to be noisy or erroneous using a fluency scoring model;
[C] generate a model training dataset from a baseline dataset comprising a plurality of sentences labeled as noncompliant with one or more rulesets;
[D] train a conditional autoregressive language model using the model training dataset as input to generate synthetic sentences predicted to be noncompliant with the one or more rulesets;
wherein training the conditional autoregressive language model comprises:
[E] converting each sentence in the model training dataset into a contextual embedding;
[F] generating a plurality of probability values each corresponding to a predicted next word in the sentence based upon the contextual embedding; and
[G] determining a prediction error based upon a comparison of each predicted next word in the sentence to an actual next word in the sentence;
[H] generate a corpus of synthetic sentences using the trained conditional autoregressive language model;
[I] remove one or more duplicate synthetic sentences from the corpus of synthetic sentences;
for each synthetic sentence in the corpus of synthetic sentences,
[J] execute a compliance classification model using the synthetic sentence as input to generate a label for the synthetic sentence, the label indicating whether the synthetic sentence is compliant or noncompliant with one or more rulesets;
[K] identify a plurality of the synthetic sentences labeled as noncompliant by the compliance classification model that are semantically similar to one or more sentences from the baseline dataset and
[L] generate a first parallel corpus of synthetic training data comprising the identified synthetic sentences; and
[M] execute a language suggestion model using the identified synthetic sentences as input to generate a second parallel corpus of synthetic training data comprising a plurality of synthetic sentences predicted to comply with the one or more rulesets.
for each synthetic sentence in the second parallel corpus,
[N] execute the compliance classification model to confirm whether the synthetic sentence is compliant or noncompliant with the one or more rulesets; and
[O] use the first parallel corpus and the second parallel corpus as training data for a machine learning model to predict compliance with the one or more rulesets.
Independent claim 1 (which is representative of independent claims 14) recites: converting the training data set sentence and generating a plurality of values corresponding to the predicted text ([E], [F]), determining a prediction error and generating synthetic sentences ([G], [H]), removing duplicates and execute a compliance classification ([I], [J]), identify a plurality of synthetic sentences a generate synthetic training data (([K], [L]), execute a language suggestion model ([M]); execute a compliance classification by using the first parallel corpus and the second parallel corpus of training data ([N], [O]), which, based on the claim language and in view of the application disclosure, represents a process aimed at: “predicting rule compliance by generating parallel synthetic training data for machine learning models”.
This is a combination that, under its broadest reasonable interpretation, covers reasonable performance of limitations expressing observation, evaluation, judgement, in the human mind. Nothing in the claim elements precludes the steps from being practically performed in the human mind. For example, the step “converting each sentence in the model training dataset into a contextual embedding”, as drafted in the context of this claim, encompasses the user manually or mentally converting sentences, without physical aid. Further, the step “generating a plurality of probability values each corresponding to a predicted next word in the sentence based upon the contextual embedding”, as drafted in the context of this claim, encompasses the user manually or mentally assessing probabilities, without physical aid. Further, the step “determining a prediction error based upon a comparison of each predicted next word in the sentence to an actual next word in the sentence”, as drafted in the context of this claim, encompasses the user manually or mentally assessing the error of the prediction, without physical aid. Further, the step “generate a corpus of synthetic sentences using the trained conditional autoregressive language model”, as drafted in the context of this claim, encompasses the user manually or mentally creating synthetic sentences, without physical aid. Further, the step “remove one or more duplicate synthetic sentences from the corpus of synthetic sentences”, as drafted in the context of this claim, encompasses the user manually or mentally deduplicating, without physical aid. Further, the step “execute a compliance classification model using the synthetic sentence as input to generate a label for the synthetic sentence, the label indicating whether the synthetic sentence is compliant or noncompliant with one or more rulesets”, as drafted in the context of this claim, encompasses the user manually or mentally classifying based on rules, without physical aid. Further, the step “identify a plurality of the synthetic sentences labeled as noncompliant by the compliance classification model that are semantically similar to one or more sentences from the baseline dataset”, as drafted in the context of this claim, encompasses the user manually or mentally identifying synthetic sentences, without physical aid. Further, the step “generate a first parallel corpus of synthetic training data comprising the identified synthetic sentences”, as drafted in the context of this claim, encompasses the user manually or mentally generating synthetic training data, without physical aid. Further, the step “execute a language suggestion model using the identified synthetic sentences as input to generate a second parallel corpus of synthetic training data comprising a plurality of synthetic sentences predicted to comply with the one or more rulesets”, as drafted in the context of this claim, encompasses the user manually or mentally create a language suggestion model, without physical aid. Further, the step “execute the compliance classification model to confirm whether the synthetic sentence is compliant or noncompliant with the one or more rulesets”, as drafted in the context of this claim, encompasses the user manually or mentally creating a compliance classification model, without physical aid. Further, the step “use the first parallel corpus and the second parallel corpus as training data for a machine learning model to predict compliance with the one or more rulesets”, as drafted in the context of this claim, encompasses the user manually or mentally using the two sets of training data to predict compliance, without physical aid. without physical aid. These limitations fall under the Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2)). The use of a physical aid would not negate the mental nature of this limitation (see MPEP 2106.04(a)(2) iii B)
Accordingly, it is concluded that independent claim 1 (which is representative of independent claims 14) recites an abstract idea that corresponds to a judicial exception.
[INDEPENDENT CLAIMS – Additional Elements]
Per Step 2A.2. The identified abstract idea is not integrated into a practical application because the additional elements in the independent claims only amount to instructions to apply the judicial exception to a computer, or are a general link to a technological environment (see MPEP 2106.05(f); MPEP 2106.05(h)).
For example, the added elements “by a server computing system,” recite computing elements at a high level of generality, generally linking the use of a judicial exception to a particular technological environment (see MPEP 2106.05(h)), or merely using a computer as a tool to perform an abstract idea (MPEP 2106.05(f)).
These qualifiers of the independent claims do not preclude from carrying out the identified abstract idea “predicting rule compliance by generating parallel synthetic training data for machine learning models”, and do not serve to integrate the identified abstract idea into a practical application.
The additional steps in the independent claims, shown not bolded above, recite: filtering a baseline dataset ([B]), generating a synthetic training data set ([C]), training a language model with the synthetic training data set ([D]). When considered individually, they amount to nothing more than receiving data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is concluded that these claim elements do not integrate the identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) into a practical application (see MPEP 2106.05(f)(2)).
Therefore, the additional claim elements of independent claim 1 (which is representative of independent claims 14) do not integrate the identified abstract idea into a practical application and the claims remain a judicial exception.
Per Step 2B. Independent claim 1 (which is representative of independent claims 14) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 14 are deemed ineligible.
Dependent claim 7, which is representative of dependent claims 20, recites:
executing the trained conditional autoregressive language model using one or more configuration parameters to generate the corpus of synthetic sentences.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “predicting rule compliance by generating parallel synthetic training data for machine learning models”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea. Thus, it is concluded that these claim elements do not integrate the identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) into a practical application (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”).
Therefore, dependent claim 7 (which is representative of dependent claims 20) is deemed ineligible.
Dependent claim 11, which is representative of dependent claims 24, recites:
comparing the synthetic sentence to one or more sentences from the baseline dataset;
determining a cosine similarity between the synthetic sentence and each of the one or more sentences from the baseline dataset; and
selecting one of the one or more sentences from the baseline dataset as a semantically similar sentence based upon the cosine similarity.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “predicting rule compliance by generating parallel synthetic training data for machine learning models”. The elements in this dependent claim are comparable to reasonable performance of limitations expressing observation, evaluation, judgement in the human mind. Nothing in the claim elements precludes the steps from being practically performed in the human mind. These limitations fall under the Mental Processes, i.e., Concepts Performed in the Human Mind grouping of abstract ideas (see MPEP 2106.04(a)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”).
Therefore, dependent claim 11 (which is representative of dependent claims 24) is deemed ineligible.
Dependent claim 29, which is representative of dependent claims 33, recites:
the fluency scoring model filters out sentences assigned a fluency score below a predefined threshold.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “predicting rule compliance by generating parallel synthetic training data for machine learning models”. The elements in this dependent claim are comparable to “sorting information” i.e. comparing data, which has been recognized by a controlling court as "well-understood, routine and conventional computing functions" when claimed generically as they are in these dependent claims (see MPEP 2106.05(d) II)).
The dependent claim elements have the same relationship to the underlying abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”).
Therefore, dependent claim 29 (which is representative of dependent claims 33) is deemed ineligible.
Dependent claim 30, which is representative of dependent claims 34, recites:
generating a first corpus of synthetic sentences having a first level of semantic similarity to the baseline dataset and a second corpus of synthetic sentences having a second, lower level of semantic similarity to the baseline dataset to promote diversity in the generated parallel corpus.
When considered individually, these added claim elements further elaborate on the abstract idea identified in the independent claims, because the dependent claim continues to recite the identified abstract idea: “predicting rule compliance by generating parallel synthetic training data for machine learning models”. The elements in this dependent claim are comparable to receiving/transmitting data, processing data, storing results or transmitting data that serves merely to implement the abstract idea using computing components for performing computer functions (corresponding to the words “apply it” or an equivalent), or merely uses a computer as a tool to perform the identified abstract idea (see MPEP 2106.05(f)(2)).
The dependent claim elements have the same relationship to the underlying abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”) as outlined in the independent claims analysis above. Thus, it is readily apparent that the dependent claim elements are not directed to any specific improvements of the independent claims and do not practically or significantly alter how the identified abstract idea would be performed. When considered as a whole, as an ordered combination, the dependent claim further elaborates on the previously identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”).
Therefore, dependent claim 30 (which is representative of dependent claims 34) is deemed ineligible.
Dependent claims 3, 5-6, 8, 10, 12, 27-28, which are representative of dependent claims 16, 18, 19, 21, 23, 25, 31-32, respectively, recite:
wherein the conditional autoregressive language model comprises a multi-layer transformer decoder architecture with a plurality of attention heads.
wherein the server computing device determines the prediction error using a cross entropy loss function.
wherein the server computing device backpropagates the prediction error to adjust one or more weights of the conditional autoregressive language model during training.
wherein the one or more configuration parameters comprise greedy sampling, top-k sampling, top-p sampling, and temperature hyperparameters.
wherein the server computing device removes one or more duplicate sentences from the corpus of synthetic sentences before executing the compliance classification model.
wherein the compliance classification model comprises a Multilingual Autoencoder that Retrieves and Generates (MARGE) model architecture.
wherein the language suggestion model converts one or more of the identified synthetic sentences into a corresponding synthetic sentence predicted to comply with the one or more rulesets.
wherein the server computing device executes the compliance classification model on each synthetic sentence in the second parallel corpus of synthetic training data to confirm whether the synthetic sentence is compliant or noncompliant with the one or more rulesets.
wherein the conditional autoregressive language model comprises a byte pair encoder, a word embedding layer, a positional embedding layer, a multi-head attention layer, a contextual embedding layer, a next word prediction layer, and a prediction error layer.
wherein weights of the conditional autoregressive language model are initialized with pre-trained transformer weights and fine-tuned on domain-specific data.
These further elements in the dependent claims do not perform any claimed method steps. They describe the nature, structure and/or content of other claim elements – the language model; the server; the configuration parameters; the classification model; the language suggestion model – and as such, cannot change the nature of the identified abstract idea (“predicting rule compliance by generating parallel synthetic training data for machine learning models”), from a judicial exception into eligible subject matter, because they do not represent significantly more (see MPEP 2106.07). The nature, form or structure of the other claim elements themselves do not practically or significantly alter how the identified abstract idea would be performed and do not provide more than a general link to a technological environment.
Therefore, dependent claims 3, 5-6, 8, 10, 12, 27-28, which are representative of dependent claims 16, 18, 19, 21, 23, 25, 31-32, respectively, are deemed ineligible.
When the dependent claims are considered as a whole, as an ordered combination, the claim elements noted above appear to merely apply the abstract concept to a technical environment in a very general sense. The most significant elements, which form the abstract concept, are set forth in the independent claims. The fact that the computing devices and the dependent claims are facilitating the abstract concept is not enough to confer statutory subject matter eligibility, since their individual and combined significance do not transform the identified abstract concept at the core of the claimed invention into eligible subject matter. Therefore, it is concluded that the dependent claims of the instant application, considered individually, or as a as a whole, as an ordered combination, do not amount to significantly more (see MPEP 2106.07(a)II).
In sum, claims 1, 3, 5-8, 10-12, 14, 16, 18-21, 23-25, 27-34 are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Examiner Remarks
No art rejection has been applied for the instant set of claims. The identified prior art does not disclose following claim limitations:
for each synthetic sentence in the corpus of synthetic sentences, execute a compliance classification model using the synthetic sentence as input to generate a label for the synthetic sentence, the label indicating whether the synthetic sentence is compliant or noncompliant with one or more rulesets;
identify a plurality of the synthetic sentences labeled as noncompliant by the compliance classification model that are semantically similar to one or more sentences from the baseline dataset and
generate a first parallel corpus of synthetic training data comprising the identified synthetic sentences;
execute a language suggestion model using the identified synthetic sentences as input to generate a second parallel corpus of synthetic training data comprising a plurality of synthetic sentences predicted to comply with the one or more rulesets;
The prior art discloses elements of the claimed invention. The prior art of record does not disclose the unique distinct features that render the claims allowable. However, Examiner has determined that it would be impermissible hind-sight reasoning for a person of ordinary skill in the art to combine the individual elements disclosed in the prior-art in order to achieve Applicant's claimed invention.
Response to Amendments/Arguments
Applicant’s submitted remarks and arguments have been fully considered.
Applicant disagrees with the Office Action conclusions and asserts that the presented claims fully comply with the requirements of 35 U.S.C. § 101 regrading judicial exceptions.
Examiner respectfully disagrees.
With respect to Applicant’s Remarks as to the claims being rejected under 35 USC § 101.
Applicant submits:
a. The pending claims are not directed to an abstract idea.
b. The identified abstract idea is integrated into a practical application.
c. The pending claims amount to significantly more.
Furthermore, Applicant asserts that the Office has failed to meet its burden to identify the abstract idea and to establish that the identified abstract idea is not integrated into a practical application and that the pending claims do not amount to significantly more.
Examiner responds – The arguments have been considered in light of Applicants’ amendments to the claims. The arguments ARE NOT PERSUASIVE. Therefore, the rejection is maintained.
The pending claims, as a whole, are directed to an abstract idea not integrated into a practical application. This is because (1) they do not effect improvements to the functioning of a computer, or to any other technology or technical field (see MPEP 2106.05 (a)); (2) they do not apply or use the abstract idea to effect a particular treatment or prophylaxis for a disease or a medical condition (see the Vanda memo); (3) they do not apply the abstract idea with, or by use of, a particular machine (see MPEP 2106.05 (b)); (4) they do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05 (c)); (5) they do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the identified abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designated to monopolize the exception (see MPEP 2106.05 (e) and the Vanda memo).
In addition, the pending claims do not amount to significantly more than the abstract idea itself.
As such, the pending claims, when considered as a whole, are directed to an abstract idea not integrated into a practical application and not amounting to significantly more.
More specific:
Applicant submits “Rather, the claims recite a specific computational pipeline implemented by interacting machine-learning components on a server computing device.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The computational pipeline consists of steps. The eligibility analysis in the instant office action has determined that each of the steps, separately, can be performed in the human mind.
Thus, the rejection is proper and has been maintained.
Applicant submits “The specification expressly describes a specialized system including a dataset generation module, model training module, model execution module, synthetic data validation module, and parallel corpus generation module, together with a conditional autoregressive language model, sentence classification model, and language suggestion model”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The use of a physical aid would not negate the mental nature of these limitations (see MPEP 2106.04(a)(2) iii B)
Thus, the rejection is proper and has been maintained.
Applicant submits “In Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the Federal Circuit explained that claims are not abstract when they are directed to a specific improvement in computer functionality or a specific technological solution. Likewise, here, the amended claims are directed to a concrete technological solution for generating validated synthetic training corpora that can be used to train a compliance-prediction model, rather than to an abstract idea of evaluating sentences for compliance.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, it is not proper practice to go and find a single Court decision and use the general arguments from that decision to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Second, Applicant appears to argue that the claims are patent eligible and significantly more, as they are similar to the claims that were found to be eligible in the Enfish decision. However, in the Enfish decision, the Court sided with the applicant/patent holder not only because, as quoted, “The Supreme Court has suggested that claims “purport[ing] to improve the functioning of the computer itself,” or “improv[ing] an existing technological process” might not succumb to the abstract idea exception. See Alice, 134 S. Ct. at 2358–59.
While it is correct that the Court has discussed improvements, this rationale from the Enfish decision, cannot be taken in a vacuum, as the court made clear that the fundamental ultimate reasoning for their decision hinged upon, as they explain, that “Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.” The Court points to the technical improvement of either the computer technology or the technical field of endeavor. It was ultimately these reasons that took the claims beyond simply generic functioning, not only that it was solving a problem that specifically rose in the realm of computer networks.
By contrast, the instant application discloses a process that converts sentences, generates probability values, determines a prediction error, generates synthetic sentences, removes duplicates, executes compliance classification, executes a language suggestion model, along with the classification and uses the classes as training data. All these are basic computer operations, well-known, routine and conventional in the field. Unlike the limitations in the Enfish case, the limitation of the instant application to integrate the identified abstract idea into a practical application, for they do not improve the technical field.
Thus, the rejection is proper and has been maintained.
Applicant submits “Similarly, in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), the Federal Circuit found claims patent-eligible where the claimed rules were applied in a specific manner to achieve a technological result.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
First, it is not proper practice to go and find a single Court decision and use the general arguments from that decision to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Second, while it is correct that the Court has discussed improvements, this rationale from the McRO decision, cannot be taken in a vacuum, as the court made clear that the fundamental ultimate reasoning for their decision hinged upon, as they explain, that “Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.” The Court points to the technical improvement of either the computer technology or the technical field of endeavor. It was ultimately these reasons that took the claims beyond simply generic functioning, not only that it was solving a problem that specifically rose in the realm of computer networks.
By contrast, the instant application discloses a process that converts sentences, generates probability values, determines a prediction error, generates synthetic sentences, removes duplicates, executes compliance classification, executes a language suggestion model, along with the classification and uses the classes as training data. Examiner could not identify among the disclosed elements any particular arrangements that are not routine and conventional. Unlike the limitations in the McRO case, the limitation of the instant application, including their particular arrangements, do not integrate the identified abstract idea into a practical applicant and do not constitute “significantly more,” for they do not improve the technical field.
Thus, the rejection is proper and has been maintained.
Applicant submits “Here, the specification explains that the invention addresses a technological problem in machine-learning systems: baseline compliance datasets can be limited, noisy, erroneous, and inadequate for training robust classification models. … The combination of limitations in representative claim 1 reflects the disclosed technological improvement.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
MPEP 2106.04(d)(1) discloses:
An important consideration to evaluate when determining whether the claim as a whole integrates a judicial exception into a practical application is whether the claimed invention improves the functioning of a computer or other technology .... In short, first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art .... Second, if the specification sets forth an improvement in technology. the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. (Emphasis added)
That is, the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity. (Emphasis added)
Thus, the rejection is proper and has been maintained.
Applicant submits “The claims therefore do not merely state an abstract goal and instruct a computer to apply it.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant office action does not make such an allegation.
Thus, the rejection is proper and has been maintained.
Applicant submits “In Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), the Federal Circuit held that claims involving mathematical calculations were patent-eligible where the calculations were used within a particular technological system to achieve a concrete technical result.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
It is not proper practice to go and find a single Court decision and use the general arguments from that decision to determine eligibility of a particular claimed invention, unless the particular claimed invention uniquely matches (i.e. a case that involves identical or similar facts or similar legal issues) the subject matter of the claimed invention in the Court decision, which in the instant situation it does not. Each application has to be considered on its own merits.
Thus, the rejection is proper and has been maintained.
Applicant submits “In addition, McRO confirms that claims are not abstract when they apply computational rules in a specific manner to achieve a concrete technological outcome.”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
See response in regard to “McRO” here above.
Thus, the rejection is proper and has been maintained.
Applicant submits “B. Applicant's Claims are Statutory Under Step 2B”
Examiner has carefully considered, but doesn’t find Applicant’s arguments persuasive.
The eligibility analysis in the instant office action has determined at step 2B:
Per Step 2B. Independent claim 1 (which is representative of independent claims 14) does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when the independent claim is reevaluated as a whole, as an ordered combination under the considerations of Step 2B, the outcome is the same like under Step 2A.2.
Overall, it is concluded that independent claims 1, 14 are deemed ineligible.
Thus, the rejection is proper and has been maintained.
It follows from the above that there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. Therefore, the rejection under 35 U.S.C. § 101 is maintained.
Examiner has reviewed and considered all of Applicant’s remarks. The rejection is maintained, necessitated by the fact that the rejection of the claims under 35 USC § 101 has not been overcome.
Conclusion
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 mailing date of this final action.
Inquiries
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As disclosed in MPEP 502.03, communications via Internet e-mail are at the discretion of the applicant. Without a written authorization by applicant in place, the USPTO will not respond via Internet e-mail to any Internet correspondence which contains information subject to the confidentiality requirement as set forth in 35 U.S.C. 122. A paper copy of such correspondence will be placed in the appropriate patent application. The following is a sample authorization form which may be used by applicant:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center information webpage. Status information for unpublished applications is available to registered users through Patent Center information webpage only.
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.
Any response to this action should be mailed to:
Commissioner of Patents and Trademarks
P.O. Box 1450
Alexandria, VA 22313-1450
or faxed to 571-273-8300
/Radu Andrei/
Primary Examiner, AU 3697
Prosecution Insights