DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant's response filed 12 June 2026 has been considered and entered. Accordingly, claims 1-11 and 13-20 are pending in this application. Claims 1, 4-5, 8-11, 13, 15 and 17 are previously presented; claims 2-3, 6-7, 14, 16 and 18-20 are original; claim 12 is cancelled.
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.
3. Claims 1-11 and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites the limitations of “generate a globally unique identifier (GUID) that uniquely identifies the input; assign the input and the GUID to a taxonomy tree, wherein the input and the GUID are assigned to a node within a hierarchy of the taxonomy tree; map the taxonomy tree to an ontology; apply the ontology to a document to verify use of terminology in the document; and modify terminology of the document based upon the verification”. These limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. The user can manually generate a GUID that uniquely identifies the input and assigns the input and GUID to a node within a hierarchy of the taxonomy tree with a pen and paper. Thus, these limitations are a mental process. As such, the claim is directed to a judicial exception.
This judicial exception is not integrated into a practical application because the claim recites the additional elements: receive an input that identifies a term and a definition of the term; store the input and the GUID in a data store. The receiving and storing steps are recited as a high level of generality, i.e., as a generic processor performing a generic computer function of processing data and amounts to mere data gathering, which is a form of insignificant extra-solution activity. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. Claim1 further recites the additional element “A system, comprising: a computing device comprising a processor and a memory; and machine-readable instructions stored in the memory that, when executed by the processor, cause the computing device to at least:”. However, the inclusion of generic computer components being used to implement the abstract idea do not amount to significantly more than the abstract idea. The combination of these additional elements is no more than insignificant extra solution activity (receiving and storing input data) that provides data for the exception, with mere instructions to apply the exception using a generic computer component. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. See MPEP 2016.05(b), MPEP 2106.05(h). Claim 1 is directed to the abstract idea.
Even when considered in combination, these additional elements represent mere instructions to apply an exception with well understood, routine, and conventional insignificant extra-solution activity (i.e. receiving or transmitting data over a network and storing and retrieving information in memory – see MPEP 2106.05(d)(II)), which does not provide significantly more to the abstract idea. The mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Thus, claim 1 is not patent eligible.
As such, claim 11 is also directed to the abstract idea for the same reason as the claim 1 above. Thus, claim 11 is not patent eligible.
Regarding claim 2, the claim further recites the limitations, “wherein the machine readable instructions that, when executed by the processor, further cause the computing device to export the taxonomy tree as an Excel or XML file”, are insignificant extra solution activity which are well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality. See MPEP 2106.05(d)(II). The addition of insignificant extra-solution activity does not amount to an inventive concept. Thus, the claim includes no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claim is ineligible.
Regarding claims 3 and 17, the claims further recite the limitations, “wherein the machine readable instructions cause the computing device to store the taxonomy tree as an Excel or XML file and further cause the computing device to bi-directionally convert the taxonomy tree from the Excel to the XML file”, are insignificant extra solution activity which are well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality. See MPEP 2106.05(d)(II). The addition of insignificant extra-solution activity does not amount to an inventive concept. Thus, the claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claims 4 and 20, the claims further recite the limitations, “wherein the hierarchy comprises one or more sub-nodes, the one or more sub-nodes sharing one or more attributes with the node”, which further recites mental processes and are directed to perform mental processes that fall into the “Mental Processes” groupings of abstract ideas and are directed to a judicial exception. Furthermore, claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claim 5, the claim further recites the limitation, “mapping the taxonomy tree to an ontology”, which further recites mental processes and are directed to perform mental processes that fall into the “Mental Processes” groupings of abstract ideas and are directed to a judicial exception. Furthermore, claim includes no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claim is ineligible.
Regarding claims 6 and 13, the claims further recite the limitations, “wherein the ontology comprises a World Wide Web Consortium (W3C) format”, which indicates mere data gathering activity that the courts have found to be insignificant extra-solution activity. See MPEP 2106.05(g). The addition of insignificant extra-solution activity does not amount to an inventive concept. Furthermore, claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claims 7 and 14, the claims further recite the limitations, “wherein the ontology comprises a Web Ontology Language (OWL)”, which indicates mere data gathering activity that the courts have found to be insignificant extra-solution activity. See MPEP 2106.05(g). The addition of insignificant extra-solution activity does not amount to an inventive concept. Furthermore, claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claims 8 and 19, the claims further recite the limitations, “wherein the input further identifies at least one of a source of the term, a date of when the definition was created, an abbreviation of the term, one or more related terms, a validation indicator, or a reference code”, which indicates mere data gathering activity that the courts have found to be insignificant extra-solution activity. See MPEP 2106.05(g). The addition of insignificant extra-solution activity does not amount to an inventive concept. Furthermore, claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claims 9 and 18, the claims further recite the limitations, “wherein the input is imported and exported, either in an XML format or an Excel format”, are insignificant extra solution activity which are well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality. See MPEP 2106.05(d)(II). The addition of insignificant extra-solution activity does not amount to an inventive concept. Thus, the claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Regarding claim 10, the claim further recites the limitations, “wherein the input is configured to be locked from editing once stored in the data store”, are insignificant extra solution activity which are well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality. See MPEP 2106.05(d)(II). The addition of insignificant extra-solution activity does not amount to an inventive concept. Thus, the claim includes no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claim is ineligible.
Regarding claim 15, the claim further recites the limitations, “storing the input in a data dictionary, wherein the stored input is identifiable by the corresponding GUID”, are insignificant extra solution activity which provides data for the exception, with mere instructions to apply the exception using a generic computer component. Thus, the claim includes no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claim is ineligible.
Regarding claim 16, the claim further recites the limitations, “wherein the stored data, taxonomy and ontology are locked after validation”, are insignificant extra solution activity which are well- understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality. See MPEP 2106.05(d)(II). The addition of insignificant extra-solution activity does not amount to an inventive concept. Thus, the claim includes no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claim is ineligible.
Response to Arguments
4. Applicant argues, see pages 6-10, regarding the 101 rejections, that the claims are not directed to an abstract idea. However, examiner respectfully responds that independent claims recite the steps which is merely a concept of mental process and are directed to perform mental processes that fall into the “Mental Processes” groupings of abstract ideas and are directed to a judicial exception. A user can mentally (or with the aid of pen and paper) perform generating, assigning, mapping, applying and modifying steps. Applicant has not provided any proof or evidence that these steps are not performable mentally.
Applicant further argues that the present claims are directed to a specific technical solution to a practical application that addresses application of the ontology to a document to verify use of terminology in the document. However, the claims only recite mentally performable steps coupled with additional elements that are insignificant extra-solution activity that is well-understood, routine and conventional or instructions to apply the judicial exception with a generic computer component. The claims include no additional elements that would integrate the judicial exception into a practical application or would amount to significantly more than the abstract idea. Thus, the claims are ineligible.
Applicant’s arguments, see pages 10-21, filed on June 12, 2026, with respect
to the rejections of claims 1-11 and 13-20 under 35 USC §103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
Conclusion
5. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Brodie et al. (US 2009/0055431 A1) teaches identifying and classifying information using ontology and a user interface application that enables a user to navigate data objects in a system using ontology to identify and classify personally identifiable information.
Chashchin et al. (US 2013/0212111 A1) teaches text categorization based on ontologies.
Lewis et al. (US 9,110,984 B1) teaches constructing a taxonomy based on hierarchical clustering.
6. 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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD SOLAIMAN BHUYAN whose telephone number is (571)272-7843. The examiner can normally be reached on Monday - Friday 9:00am-5:00pm EST.
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/Mohammad S Bhuyan/Examiner, Art Unit 2168
/CHARLES RONES/Supervisory Patent Examiner, Art Unit 2168
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