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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 19, 2026 has been entered.
Claim Objections
Claims 1-16, 19-22, and 59-60 are objected to because of the following informalities:
Claim 1 recites “a data extraction module for analyzing documentation stored in said database” Please amend “database” to “first database” for consistency.
Claim 13 recites “a document analysis module for analyzing documents stored in said database; an ideation module for assisting users in documenting ideas such that said ideas are documented in data files stored in said database”. Please amend “database” to “first database” for consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-16, 19-22, and 59-60 are rejected under 35 U.S.C 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1-13, 19-22, and 59-60 recite a system (machine), and Claims 14-16 recites (machine) and therefore fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?):
Referring to claims 1-16, 19-22, and 59-60, the claims recite a manner of managing documents and files associated with IP assets, which under its broadest reasonable interpretation, covers concepts under the Certain Methods of Organizing Human Activities grouping of abstract ideas respectively. Additionally, the claims recite a manner of generating a timeline visualization, which under its broadest reasonable interpretation, covers concepts under the Mental Processes grouping of abstract ideas.
The abstract idea portion of the claims is as follows:
(Claim 1)
[A system for] managing IP assets and data files, said data files being associated with at least one IP asset being managed, [the system comprising: a user interface module for] receiving input from a user and for uploading at least one data file and for reviewing said at least one data file; [a server comprising at least one processor configured to execute programmed instructions stored in non-transitory memory, said server being for] receiving said at least one data file;
and [a first database for] storing said at least one data file, [a management module for] managing said data files and document files, said document files being a specific type of data file;
and [a timeline reporting module for] generating timelines and timeline-based reports based on data retrieved [from said first database];
and having at least one of:
[a document analysis module for] analyzing a content of document files;
and [a data extraction module for] analyzing documentation stored [in said database] and for extracting relevant data from said documentation, said relevant data being added [to said first database], wherein each data file relates to at least one IP asset being managed [by said system];
[said management module] organizes said data files based on user defined project groupings;
data files organized into a specific project grouping are linked to one another and said data files organized into a project grouping forms a project object;
each project grouping relates to at least one of: a specific idea, a specific product, a specific service, and a specific transaction;
visible indicia viewable by a user as a timeline visualization [on an interface] are automatically generated [by said timeline reporting module] based on said relevant data extracted from said documentation;
said visible indicia comprising: a timeline scale bar;
at least one rectangular element oriented parallel to said timeline scale bar, said at least one rectangular element corresponding to a specific IP asset and said at least one rectangular element comprising a plurality of rectangular subsections, each of said rectangular subsections corresponding to a specific administrative lifecycle stage of said specific IP asset, wherein each one of said rectangular subsections has a first end that is perpendicular to a first point on said timeline scale bar, said first point representing a start date of an administrative lifecycle stage to which said one of said rectangular subsections corresponds, wherein said each one of said rectangular subsections has a second end that is perpendicular to a second point on said timeline scale bar, said second point representing an end date of said administrative lifecycle stage to which said one of said rectangular subsections corresponds;
and a legend detailing said lifecycle stages,
wherein said rectangular subsections are visually different from each other and said legend details such differences, and wherein, when said user [hovers a cursor of said interface over a specific point on said timeline visualization, or] selects said specific point [said server] causes data stored [in said first database] and associated with said specific point on said timeline visualization to be displayed to said user.
(Claim 14)
[A system for] managing IP assets, [said system comprising: a user interface for] uploading at least one data file and for reviewing said at least one data file;
[a server comprising at least one processor configured to execute programmed instructions stored in non-transitory memory said server being for] receiving said at least one data file;
and [a cloud-based data storage space for] storing said at least one data file,
wherein metadata related to said at least one data file is also stored [in the data storage space,]
[wherein said system further comprises a reporting module for] generating a tracking report related to said metadata, said report being presented to a user,
[a data extraction module for] analyzing documentation stored [in a database and for] extracting relevant data from said documentation, said relevant data being added to said database;
and [a timeline reporting module for] generating timelines and timeline visualizations based on said relevant data, said at least one data file and/or said metadata,
wherein said at least one data file relates to an IP asset being managed [by said system],
wherein visible indicia viewable by a user as said timeline visualization are automatically generated [by said timeline reporting module], wherein said visible indicia comprise:
a timeline scale bar:
at least one rectangular element oriented parallel to said timeline scale bar, said at least one rectangular element corresponding to a specific IP asset and said at least one rectangular element comprising a plurality of rectangular subsections, each of said rectangular subsections corresponding to a specific lifecycle stage of said specific IP asset, wherein each one of said rectangular subsections has a first end that is perpendicular to a first point on said timeline scale bar, said first point representing a start date of a lifecycle stage to which said one of said rectangular subsections corresponds, wherein said each one of said rectangular subsections has a second end that is perpendicular to a second point on said timeline scale bar, said second point representing an end date of said lifecycle stage to which said one of said rectangular subsections corresponds;
and a legend detailing said lifecycle stages,
wherein said rectangular subsections are visually different from each other and said legend details such differences,
and wherein, when said user [hovers a cursor of said interface over a specific point on said timeline visualization, or] selects said specific point, [said server] causes data stored [in said cloud-based data storage space] and associated with said specific point on said timeline visualization to be displayed to said user.
Where the portions not bracketed recite the abstract idea
Here claims 1 and 14 recite concepts performed in Certain Methods of Organizing Activity, in particular managing personal behavior or interactions between people (including following rules or instructions) but for the recitation of generic computer components. In the present application concepts reciting a manner of managing documents and files associated with IP assets. (See paragraphs 1 and 6). Further the claims recite concepts capable of being performed in Mental Processes (including an observation, evaluation, judgment, or opinion) but for the recitation of generic computing components. In the present application concepts reciting a manner of generating a timeline visualization. (See paragraphs 120-123)
If a claim limitation, under its broadest reasonable interpretation, covers concepts capable of being performed in managing personal behavior or interactions between people (including following rules or instructions) it falls under the Certain Methods of Organizing Human Activity grouping of abstract ideas. See MPEP 2106.04. If a claim limitation, under its broadest reasonable interpretation, covers concepts capable of being performed in the human mind or via pen and paper (including an observation, evaluation, judgment, or opinion) it falls under the Mental Processes grouping of abstract ideas. See Id.
Accordingly, the claims recite an abstract idea.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?):
The examiner views the following as the additional elements:
A system. (See Figure 1 and paragraph 93)
A user interface module. (See paragraphs 165-166)
A server. (See paragraph 123)
A first database. (See paragraph 164)
A management module. (See paragraph 125)
A document analysis module. (See paragraph 159)
A user interface. (See paragraph 64)
A reporting module. (See paragraphs 165-166)
A cloud-based data storage space. (See paragraph 159)
A timeline reporting module. (See paragraphs 165-166)
A data extraction module. (See paragraphs 165-166)
An interface. (See paragraph 64)
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)).
Referring to “hovers a cursor of said interface over a specific point on said timeline visualization,” the examiner views as a results-oriented solution lacking details and therefore equivalent to merely apply it. (See paragraph 127 of the Specification)
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 system 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 claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
Dependent claims 2, 4-6, 8-10, 16, 19-20, 22, and 59-60 further define the abstract idea as identified. Therefore claims 2, 4-6, 8-10, 16, 19-20, 22, and 59-60 are considered to be patent ineligible.
Dependent claim 3 recites the results-oriented solution step of “wherein said user interface is integrated with at least one third party application on a computing device used by a user, such that data files are uploadable to said system directly from said at least one third party application” (See paragraph 163) and are therefore viewed as equivalent 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 3 is considered to be patent ineligible.
Dependent claim 7 further defines the abstract idea as identified. Additionally, the claim recites the additional elements of a computing device (See paragraph 140) at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computing components and therefore does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 7 is considered to be patent ineligible.
Dependent claims 11 and 15 further define the abstract idea as identified. Additionally, the claim recites the additional elements of a user interface (See paragraph 93) at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computing components and therefore does not integrate the abstract idea into a practical application or adds significantly more. Therefore claims 11 and 15 are considered to be patent ineligible.
Dependent claim 12 further defines the abstract idea as identified. Additionally, the claim recites the additional elements of a second database (See paragraph 163) at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computing components and therefore does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 12 is considered to be patent ineligible.
Dependent claim 13 further defines the abstract idea as identified. Additionally, the claim recites the additional elements of the system (See Figure 1 and paragraph 93), a timeline reporting module (See paragraphs 165-166), said database (See paragraph 167), a document analysis module (See paragraphs 165-166), an ideation module (See paragraphs 165-166), a docketing module (See paragraphs 165-166), an automated searching module (See paragraphs 165-166), a budgeting module (See paragraphs 165-166), a reporting module (See paragraphs 165-166), said system (Figure 1 and paragraph 93), and a data extraction module (See paragraphs 165-166) at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computing components and therefore does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 13 is considered to be patent ineligible.
Dependent claim 21 further defines the abstract idea as identified. Additionally, the claim recites the additional elements of the system (See Figure 1 and paragraph 93) at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computing components and therefore does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 21 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 March 19, 2026 have been fully considered.
Applicant’s amendments and arguments, on pages 13--20 of the Remarks, regarding the 101 rejections the Examiner finds unpersuasive.
Applicant argues that the automated pipeline by which the system: (a) extracts structured temporal data from user-uploaded IP asset documentation using OCR and automated document analysis and further b) uses this extracted data to automatically generate a geometrically precise, multi segment timeline visualization with specific visual differentiation and a legend. According to Applicant this pipeline what the specification discloses given the claims their technological character citing to paragraphs 120-129, 235-241 and Figs. 7A-7C. Applicant contends this automated computer pipeline is not a mere recitation of a result or goal but rather describes how unstructured document inputs are transformed into structure temporal data, and then specific into a specific geometric visual output that provides a technological improvement over manual or generic spreadsheet-based IP management approaches.
The Examiner respectfully disagrees viewing the extraction and generation steps are part of the recited abstract ideas that are merely applied by generic computing components for purposes of automating the abstract idea and do not integrate the abstract idea into a practical application or adds significantly more. The Examiner views the manner the output is displayed is further defining the abstract idea in terms of the output to be displayed for a user to view.
Applicant argues the claims include components that provide the improvement disclosed in the specification in particular referring to limitations that contains the terms: data extraction module (which relates to the OCR based automated extraction pipeline discussed in the Spec), timeline reporting module (the module that transforms the extracted structured data into a visual output), automatic generation from extracted data as discussed in paragraph 125, and the specific geometric visualization as referenced in paragraphs 235-241 and Figures 7A-C. Applicant contends that taken as an ordered combination the these element define a specific technical pipeline of an OCR-based extraction of administrative date data from IP asset documentation to structured storage in a database to automatic calculation of lifecycle periods to automated generation of a geometrically precise, visually differentiated timeline visualization. According to Applicant this is a specific technical method of transforming unstructured document inputs into structured temporal data, and presenting that data in a specific geometric visual form that improves manual IP management and generic, non-automated data presentation approaches. Applicant contends this pipeline is not merely collecting and displaying information but rather this specific combination of OCR extraction of particular data fields, automated period calculation, and constrained geometric visualization generation is precisely the kind of ordered technical combination that Desjardins decision instructs examiners to credit.
The Examiner respectfully disagrees viewing that data extraction module and timeline reporting module in addition to the other additional elements identified by the Examiner, alone and in combination, amount to no more than mere instructions to apply steps of the identified abstract idea which encompasses the data processing pipeline asserted by Applicant using generic computing components as reflected by the portions of the Specification identified by the Examiner and do not integrate the abstract idea into a practical application or adds significantly more to the abstract idea.
Applicant contends the automated extraction-to-visualization pipeline is analogous to those in Enfish because of the specific pipeline of OCR extraction to structured database storage to geometric visualization similarly constitutes an improvement in how a computer processes and presents structured temporal data, rather than merely the abstract idea of “managing IP assets” or “displaying a time line”. Applicant argues that the claims are similar to McRo because the claims specify how the system generates the timeline: through OCR extraction of specific data fields, storage in a database, automatic calculation of periods, and generation of a visualization with specific geometric constraints.
The Examiner respectfully disagrees viewing the additional elements in Enfish and McRo integrated the abstract idea into a practical application because of the benefits it provided to technology. The Examiner again views that the pipeline makes up steps of the recited abstract idea that is merely applied using generic computing components. Further, the improvements in visualizing information are for improving a user’s experience for managing IP assets, which the Examiner maintains is a commercial improvement and not an improvement to technology or any of the other considerations enumerated under MPEP 2106.04 (d).
Applicant contends the interactive display feature recited in the amended claims – wherein hovering or selecting a specific point on the timeline causes the server to retrieve data associated with that point from the database and display it to the user -further reinforces the technical character of the claims as discussed in paragraph 156. Applicant contends this is consistent with the improved user interface functionality held patent eligible in Core Wireless.
The Examiner respectfully disagrees viewing the hovering aspect and the server are mere instructions to apply the abstract idea. There is no technical specificity in terms of how the hovering is performed to merit consideration that the hovering or processing by the server constitutes an improvement to the user interface but rather applies the recited steps pertaining to displaying information from the analysis using generic computing components.
Applicant argues the claims recite an ordered combination of elements that add significantly more to the abstract idea. Specifically, the claims require: a data extraction module that applies OCR to uploaded IP asset documentation to extract specific administrative date fields and stores them in a database; a timeline reporting module that automatically generates, from the extracted data, a timeline visualization comprising rectangular subsections each geometrically constrained by perpendicular endpoints on a scale bar corresponding to lifecycle stage start and end dates, with visual differentiation and a legend; a server that, when a user hovers over or selects a specific point on the generated timeline visualization, causes data stored in the database and associated with that specific point to be retrieved and displayed to the
user; and a layered visualization architecture in which multiple information layers can be individually toggled (Claims 59 and 60).
The Examiner respectfully disagrees reiterating they view the concepts of extraction, storage, generating the visualization, and a user selected a point to cause data stored to be displayed as claimed to be a part of the recited abstract idea that is merely applied using generic computing components such as the data extraction module, a database, timeline reporting module, a server, or the hovering step. The Examiner does not view there to be a specific visualization architecture but rather further defining how the information is displayed to a user which the Examiner views as further defining the abstract idea rather than additional elements.
According to Applicant there is no evidence of record that any prior system combined automated OCR extraction of IP administrative dates, automatic geometric timeline generation, and cursor-based contextual data retrieval in the manner claimed. Applicant argues that no claims are narrowly tailored to a specific technical implementation and do not preempt all ways of managing IP assets, displaying timelines, or implementing interactive data visualization leaving many alternative approaches different data extraction methods, different visualization geometries, different interaction models remain available and unclaimed.
The Examiner respectfully disagrees maintaining that the lack of prior art cited is not indicative of eligibility citing to MPEP 2106.05 that states:
Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101”). As made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”).
Further with respect to Applicant’s contentions regarding preemption the Examiner cites to MPEP 2106.04:
While preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042, 1052 (Fed. Cir. 2016). Instead, questions of preemption are inherent in and resolved by the two-part framework from Alice Corp. and Mayo (the Alice/Mayo test referred to by the Office as Steps 2A and 2B). Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150, (Fed. Cir. 2016); Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379, (Fed. Cir. 2015). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible. Diamond v. Diehr, 450 U.S. 175, 191-92 n.14 (1981) (“We rejected in Flook the argument that because all possible uses of the mathematical formula were not pre-empted, the claim should be eligible for patent protection”).
Therefore, for the foregoing reasons the Examiner has maintained the 101 rejection.
Conclusion
Rubinger et al. (US Patent No. 8,335,998) – directed to generating an interactive map for displaying and analyzing a IP landscape within a given field.
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/Michael J. Monaghan/Examiner, Art Unit 3629
