DETAILED ACTION
This is a Non-Final Office Action in response to the Request for Continued Examination filed 02/17/2026.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/17/2026 has been entered.
Status of Claims
Claims 1-3, 7-11, 13-14, 17, 20 are currently pending in the application has been examined.
Response to Amendment
The amendment filed 01/20/2026 has been entered.
Response to Arguments
Claim Rejections 35 U.S.C. § 101:
Applicant submits on page 7 of the remarks that the technical subject matter recited in the claims is the kind of technical improvement that the courts have found to be patent eligible. Further, Applicant submits that the claimed method and system recite a specific and narrow implementation of any alleged abstract idea. Examiner respectfully disagrees, the present claims do not integrate the judicial exception into a practical application in a matter that imposes meaningful limit to the judicial exception. Examiner notes that under the analysis of claims under step 2A of the Alice framework, if a claim limitation, under its broadest reasonable interpretation covers an observation or evaluation, then it falls under the “mental process" grouping of abstract ideas. Accordingly, the present claims are considered to be abstract ideas because they are directed to a mental process. Under the 2019 PEG, the “mental processes” grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions. Per the October 2019 Updated Guidance examples of claims that recite mental processes include: a claim directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind. Claims can recite a mental process even if they are claimed as being performed on a computer.
Claim Rejections 35 U.S.C. § 103:
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Claim Objections
Claim 17 is objected to because of the following informalities: the claim recites the acronym JSON without priorly spelling out its definition. 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.
Claim(s) 1-3, 7-11, 13-14, 17, 20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
With respect to claims 1-3, 7-11, 13-14, 17, 20, the independent claims (claims 1 and 20) are directed, in part, to a method and a system for patent filing and annotations.
Step 1 – Independent claims 1 (method), 20 (system), and dependent claims 2-3, 7-11, 13-14, 17, and 20 fall within at least one of the four statutory categories of 35 U.S.C. 101: (i) process; (ii) machine; (iii) manufacture; or (iv) composition of matter. Claim 1 is directed to a method (i.e. process), claim 20 is directed to a system (i.e. machine). However, these claim elements are considered to be abstract ideas because they are directed to a mental process which includes observations or evaluations.
As per Step 2A - Prong 1 of the subject matter eligibility analysis, the claims are directed, in part, to maintaining a data resource containing documents related to a patent file, the documents associated with annotations attached to tags indicating a patent file task; automatically scraping documents and data related to the patent file task from a database external to the data resource; deriving a set of new annotations from the scraped documents; comparing the set of new annotations with the annotations related to the patent file to confirm the set of new annotations does not include any annotations matching the annotations presently contained in the data resource; in response to confirming the set of new annotations does not include any annotations which match the annotations presently contained in the data resource, adding the set of new annotations to the data resource, wherein adding the set of new annotations to the data resource includes adding a tag indicating the patent file task to each annotation from the set of new annotations, receiving a user selection of one or more tags indicating the patent file task, assembling a set of display annotations from the set of new annotations and from the annotations presently contained in the data resource, the set of display annotations attached to the one or more tags indicating the patent file task, wherein the display annotations provide instructions to a data resource driven user interface tool for selectively retrieving data related to the patent file task from the data resource and filtering the retrieved data for display; selectively retrieving data related to the patent file task from the data resource according to the instructions; filtering the retrieved data from the data resource according to the instructions; and displaying the filtered data on the data resource driven user interface tool, the data resource driven user interface tool comprising at least one editing pane and at least one reading pane; displaying a portion of the filtered data on the at least one reading pane, wherein the at least one editing pane and the at least one reading pane are dynamically updatable by a user. If a claim limitation, under its broadest reasonable interpretation covers an observation or evaluation, then it falls under the “mental process” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
As per Step 2A - Prong 2 of the subject matter eligibility analysis, this judicial exception is not integrated into a practical application. In particular, the claim recites additional elements: data resource, database, system, user interface, reading pane. These additional element in both steps are recited at a high-level of generality (i.e., as a generic device performing a generic computer function of receiving and storing data) such that these elements amount no more than mere instructions to apply the exception using a generic computer component. Examiner looks to Applicant’s specification in at least figures 1A and 6 and related text and [0091-0093] to understand that the invention may be implemented in a generic environment that “FIG. 6 is a block diagram of a typical, general-purpose computer 600 that can be programmed into a special purpose computer suitable for implementing one or more embodiments of the manifest record generating program disclosed herein. The manifest record generating program described above can be implemented on any general-purpose processing component, such as a computer with sufficient processing power, memory resources, and communications throughput capability to handle the necessary workload placed upon it. The computer 600 includes a processor 602 (which can be referred to as a central processor unit or CPU that is in communication with memory devices including secondary storage 604, read only memory (ROM) 606, random access memory (RAM) 608, input/output (I/O) devices 610, and network connectivity devices 612. The processor 602 can be implemented as one or more CPU chips or can be part of one or more application specific integrated circuits (ASICs). The secondary storage 604 is typically comprised of one or more disk drives or tape drives and is used for non-volatile storage of data and as an over-flow data storage device if RAM 608 is not large enough to hold all working data. Secondary storage604 can be used to store programs that arc loaded into RAM 608 when such programs are selected for execution. The ROM 606 is used to store instructions and perhaps data that are read during program execution. ROM 606 is a non-volatile memory device that typically has a small memory capacity relative to the larger memory capacity of secondary storage 604. The RAM 608 is used to store volatile data and perhaps to store instructions. Access to both ROM 606 and RAM 608 is typically faster than to secondary storage 604. The devices described herein can be configured to include computer-readable non-transitory media storing computer-readable instructions and one or more processors coupled to the memory, and when executing the computer readable instructions configure the computer 600 to perform method and process steps and operations described above with reference to FIG. 3 to FIG. 5. The computer-readable non-transitory media includes all types of computer- readable media, including magnetic storage media, optical storage media, flash media, and solid- state storage media.” Accordingly, these additional elements do not integrate the abstract idea into a practical application because they are mere instructions to implement the abstract idea on a computer.
As per Step 2B of the subject matter eligibility analysis, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements are mere instructions to apply the abstract idea on a computer. When considered individually, these claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements and the invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above, appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a generic computer receives information from another generic computer, processes the information and then sends information back. In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that amount to significantly more than the abstract idea itself. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. The fact that the generic computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility.
The dependent claims further refine the abstract idea. These claims do not provide a meaningful linking to the judicial exception. Rather, these claims offer further descriptive limitations of elements found in the independent claims and addressed above – such as by describing the nature and content of the data that is received/sent. While these descriptive elements may provide further helpful context for the claimed invention these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not significantly more than the abstract concepts at the core of the claimed invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2006/0294130 (hereinafter; Soo) in view of US Pub. No. 2020/0019589 (hereinafter; Dykema).
Regarding claims 1/20, Soo discloses:
A method; A system comprising: maintaining a data resource containing documents related to a patent file, the documents associated with annotations attached to tags indicating a patent file task; (Soo [0059] discloses an annotation process for a system while parsing patent documents.) automatically scraping documents and data related to the patent file task from a database external to the data resource; (Soo [0060] discloses According to the flowchart of extracting the semantic structure of patent documents (FIG. 2), the patent document is retrieved from the United States Patent and Trademark Office (USPTO) (step 202) and saved to a database. Afterwards, a thesaurus editing tool is used (steps 204, 206) for experts to semi-automatically perform the thesaurus construction (step 208). The thesaurus is used to help comprehend the specific terms and semantic annotation in a patent document.) deriving a set of new annotations from the scraped documents; (Soo [0100-0101] disclose an annotation process starting with semantic/syntactic annotation and claim after annotation. See also Fig. 2.) comparing the set of new annotations with the annotations related to the patent file to confirm the set of new annotations does not include any annotations matching the annotations presently contained in the data resource; (Soo [0100] discloses comparing annotations.) in response to confirming the set of new annotations does not include any annotations which match the annotations presently contained in the data resource, adding the set of new annotations to the data resource, wherein adding the set of new annotations to the data resource includes adding a tag indicating the patent file task to each annotation from the set of new annotations, receiving a user selection of one or more tags indicating the patent file task, assembling a set of display annotations from the set of new annotations and from the annotations presently contained in the data resource, the set of display annotations attached to the one or more tags indicating the patent file task, wherein the display annotations provide instructions to a data resource driven user interface tool for selectively retrieving data related to the patent file task from the data resource and filtering the retrieved data for display; (Soo [0159] discloses a graphical user interface where the user can directly update the semantic graph after annotations,)
Although Soo discloses a patent file system, Soo does not specifically disclose retrieving data from de data sources or an editing pane. However, Dykema discloses the following limitations:
selectively retrieving data related to the patent file task from the data resource according to the instructions; (Dykema [0089] discloses The document compiler 214 may then retrieve the PDO from the document processor program or database. If the PDO contains references to other data objects, such data objects may also be retrieved by the document compiler.)
filtering the retrieved data from the data resource according to the instructions; (Dykema [0160] discloses Any group or sub-group of documents may be presented by filtering the document list (e.g., all documents authored or edited by a user or group of users and/or all documents recently viewed, created or edited by a user or group of users).)
and displaying the filtered data on the data resource driven user interface tool, the data resource driven user interface tool comprising at least one editing pane and at least one reading pane; (Dykema [0090] discloses Document templates may be provided with the system, or the system may provide a user interface whereby users may create or edit their own templates (e.g., via a document management platform 216); [0119] discloses the list may appear when a user moves a cursor over the node that is currently being edited or may always be shown (unless hidden by the user) during document editing/creation. In one embodiment, a list of available node types may displayed as a menu of selectable options.)
displaying a portion of the filtered data on the at least one reading pane, wherein the at least one editing pane and the at least one reading pane are dynamically updatable by a user. (Dykema [0090] discloses Document templates may be provided with the system, or the system may provide a user interface whereby users may create or edit their own templates (e.g., via a document management platform 216); [0119] discloses the list may appear when a user moves a cursor over the node that is currently being edited or may always be shown (unless hidden by the user) during document editing/creation. In one embodiment, a list of available node types may displayed as a menu of selectable options.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with the document processor program interface of Dykema in order to increase knowledge worker drafting efficiency (Dykema abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 3, Soo discloses:
The method of claim 1, wherein the data resource includes one or more of documents, deadlines, metadata, or files related to the patent file task. (Soo [0059] discloses parsing patent documents.)
Claim(s) 2, 9, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soo in view of Dykema further in view of US Pub. No. 2018/0034879 (hereinafter; Chegini).
Regarding claim 2, although Soo discloses a patent file system, Soo does not specifically disclose a drop-down menu. However, Chegini discloses the following limitations:
The method of claim 1, wherein receiving a user selection of one or more tags indicating the patent file task includes displaying a drop-down menu including a list of tags on the data resource driven user interface. (Chegini [0088] discloses dropdown controls or menus that are used for filtering, searching and sorting comments, as well as in generated reports, such in report graphs, charts and timelines.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with system for augmenting electronic content of Chegini in order to display content associated with an identifier (Chegini abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 9, although Soo discloses a patent file system, Soo does not specifically disclose a user authorization. However, Chegini discloses the following limitations:
The method of claim 1, wherein receiving a user selection of one or more tags indicating the patent file task an indication of a task to be worked on comprises receiving an authorization from a customer to proceed. (Chegini discloses users authorized to access and add information in at least [0062]; [0169]; [0190].)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with system for augmenting electronic content of Chegini in order to display content associated with an identifier (Chegini abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 17, although Soo discloses a patent file system, Soo does not specifically disclose a JSON. However, Chegini discloses the following limitations:
The method of claim 1, further comprising producing a JSON file related to the data related to the patent file task to be worked on. (Chegini discloses data objects such as JSON.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with system for augmenting electronic content of Chegini in order to display content associated with an identifier (Chegini abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Claim(s) 7, 10-11, 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Soo in view of Dykema further in view of US Pub. No. 2020/0117753 (hereinafter; Lundberg).
Regarding claim 7, although Soo discloses a patent file system, Soo does not specifically disclose a docketing system. However, Lundberg discloses the following limitations:
The method of claim 1, wherein receiving a user selection of one or more tags indicating the patent file task an indication of a task to be worked on comprises receiving an automated notification from an automated or semi-automated docketing system. (Lundberg [0011] discloses a system for automatically checking a docketing system.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with the docketing data system of Lundberg in order to automatically detect errors in docketing (Lundberg abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 10, although Soo discloses a patent file system, Soo does not specifically disclose a foreign data source. However, Lundberg discloses the following limitations:
The method of claim 1, wherein selectively retrieving data related to the patent file task from the data resource comprises receiving documents from an external system via the data resource, wherein the external system comprises a foreign agent system via the data resource. (Lundberg [0022] discloses External sources 120 may include publicly available databases such as websites or databases associated with foreign and domestic patent offices, assignment databases, WIPO, and INPADOC.)
Regarding claim 11, although Soo discloses a patent file system, Soo does not specifically disclose an office action, prior art citation. However, Lundberg discloses the following limitations:
The method of claim 1, wherein the data related to the patent file task comprises one or more documents related to the patent file task, wherein the one or more documents comprises an office action, a prior art citation, a file history document, correspondence, or combinations thereof. (Lundberg [0034] discloses The data may include published patent documents, patent applications, office actions or other patent office correspondences, prior art references, dockets dates, annuity payment data and patent or patent application assignment information.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with the docketing data system of Lundberg in order to automatically detect errors in docketing (Lundberg abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 13, although Soo discloses a patent file system, Soo does not specifically disclose a repository. However, Lundberg discloses the following limitations:
The method of claim 1, wherein the data related to the patent file task to be worked on comprises a repository of form language. (Lundberg discloses a repository in at least [0002].)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with the docketing data system of Lundberg in order to automatically detect errors in docketing (Lundberg abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Regarding claim 14, although Soo discloses a patent file system, Soo does not specifically disclose a repository. However, Lundberg discloses the following limitations:
The method of claim 1, wherein the data related to the patent file task to be worked on comprises a repository of references. (Lundberg discloses a repository in at least [0002].)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the patent document content of Soo with the docketing data system of Lundberg in order to automatically detect errors in docketing (Lundberg abstract) because the references are analogous since they both fall within Applicant's field of endeavor and are reasonably pertinent to the problem with which Applicant is concerned.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FRANCIS Z SANTIAGO-MERCED whose telephone number is (571)270-5562. The examiner can normally be reached M-F 7am-4:30pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, BRIAN EPSTEIN can be reached at 571-270-5389. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/FRANCIS Z. SANTIAGO MERCED/Examiner, Art Unit 3625
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