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 .
DETAILED CORRESPONDENCE
Status of Claims
Claims 1, 11 have been amended.
No claims have been cancelled.
No claims have been added.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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 – 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite:
receiving a plurality of documents related to a dataset to be transformed, wherein receiving the plurality of documents includes:
receiving metadata associated with each document from the plurality of documents,
automatically identifying a document type for each document from the plurality of documents based on the metadata, to predict the document type for each document from the plurality of documents, and
applying annotations to each document based on the identified document type to produce a plurality of annotated documents related to the dataset to be transformed, wherein the annotations include a breakout between the metadata associated with each document and document text of each document; and
receiving an indication of the dataset to be transformed;
receiving the annotated documents related to the dataset to be transformed and the metadata associated with each document from the plurality of documents,
analyzing the annotations applied to each document and the metadata associated with each document to determine state data contained within each annotated document from the annotated documents related to the dataset to be transformed, wherein the state data represents one or more states of a process;
referencing the state data of the annotated documents to aggregate and organize the plurality of documents for display on a user interface
comparing the state data of the annotated documents with expected state data and identifying one or more unexpected states, wherein unexpected states comprise an anomaly with respect to the expected state data;
providing one or more options for response based on the one or more expected states, each of the one or more options for response related to the document type;
providing a probability of success for each of the one or more options for response;
receiving an indication of a selection of the one or more options for response; and
generating the organized plurality of documents and a document template associated with the selection of the one or more options for response, wherein the document template is automatically selected based on the identified document type, the breakout between the metadata and the document text, and the selection of the one or more options for response
The invention is directed towards the abstract idea of prosecuting a patent application by a user, which is further comprised of the collection and organization of information, which corresponds to both “Mental Processes” and “Certain Methods of Organizing Human Activities” as it is directed towards steps that can be performed in the human mind and/or with the aid of pen and paper, e.g., having a user receive a document, review the document to determine specifics about the document and what changes need to be made for a future document, reviewing a list of options that can be made in response to the document, and selecting and implementing those changes, in this case, the invention is directed towards prosecuting a patent application in accordance to a corresponding jurisdiction based on documents received from an intellectual property authority (e.g., an office action received from The United States Patent and Trademark Office).
The limitations of:
receiving a plurality of documents related to a dataset to be transformed, wherein receiving the plurality of documents includes:
receiving metadata associated with each document from the plurality of documents,
automatically identifying a document type for each document from the plurality of documents based on the metadata, to predict the document type for each document from the plurality of documents, and
applying annotations to each document based on the identified document type to produce a plurality of annotated documents related to the dataset to be transformed, wherein the annotations include a breakout between the metadata associated with each document and document text of each document; and
receiving an indication of the dataset to be transformed;
receiving the annotated documents related to the dataset to be transformed and the metadata associated with each document from the plurality of documents,
analyzing the annotations applied to each document and the metadata associated with each document to determine state data contained within each annotated document from the annotated documents related to the dataset to be transformed, wherein the state data represents one or more states of a process;
referencing the state data of the annotated documents to aggregate and organize the plurality of documents for display on a user interface
comparing the state data of the annotated documents with expected state data and identifying one or more unexpected states, wherein unexpected states comprise an anomaly with respect to the expected state data;
providing one or more options for response based on the one or more expected states, each of the one or more options for response related to the document type;
providing a probability of success for each of the one or more options for response;
receiving an indication of a selection of the one or more options for response; and
generating the organized plurality of documents and a document template associated with the selection of the one or more options for response, wherein the document template is automatically selected based on the identified document type, the breakout between the metadata and the document text, and the selection of the one or more options for response
are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database. That is, other than reciting a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database in the context of this claim encompasses a human, such as an applicant and/or applicant’s representative receiving and reviewing a patent application in accordance with a corresponding jurisdiction and managing the contents of the patent application in accordance with the jurisdiction in response to receiving documents from an intellectual property authority (e.g., an office action received from The United States Patent and Trademark Office). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database, then it falls within the “Mental Processes” and “Certain Methods of Organizing Human Activities” groupings of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements – a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database to communicate and display information, as well as performing operations that a human can perform in their mind and/or pen and paper, i.e. prosecuting a patent application by reviewing a documents received from an IP authority (e.g., an office action received from The United States Patent and Trademark Office) and providing a response (e.g., amendments, remarks, and etc.). The generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database in the steps are recited at a high-level of generality (i.e., as a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database can perform the insignificant extra solution steps of communicating and displaying information (See MPEP 2106.05(g) while also reciting that the a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database are merely being applied to perform the steps that can be performed in the human mind and/or with the aid of pen and paper; "[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.” Therefore, according to the MPEP, this is not solely limited to computers but includes other technology that, recited in an equivalent to “apply it,” is a mere instruction to perform the abstract idea on that technology (See MPEP 2106.05(f)) such that it amounts no more than mere instructions to apply the exception using a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database.
Although the claim recites trained “a machine learning model,” the claims and specification fail to provide sufficient disclosure regarding an improvement to how a machine learning model can be trained, but simply recites a high-level generic recitation that a machine learning algorithm was previously trained. There is insufficient evidence from the specification to indicate that the use of the machine learning model involves anything other than the generic application of a known technique or that the claimed invention purports to improve the functioning of the computer itself or the machine learning model. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
Even if the claimed invention recited training or retraining the machine learning model, it is simply an application of a computer model, itself an abstract idea manifestation. Further, such training and applying of a model is no more than putting data into a black box machine learning operation. The nomination as being a trained machine learning model is a functional label, devoid of technological implementation and application details. The specification does not contend it invented any of these activities, or the creation and use of such machine learning models. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
The Examiner asserts that the scope of the disclosed invention, as presented in the originally filed specification, is not directed towards the improvement of machine learning, but directed towards prosecuting a patent application by a user. The specification’s disclosure on machine learning is nothing more than a high general explanation of generic technology and applying it to the abstract idea. Referring to MPEP § 2106.05(f), in light of the specification, even if training and re-training were recited, they are merely being used to facilitate the tasks of the abstract idea, which provides nothing more than a results-oriented solution that lacks detail of the mechanism for accomplishing the result and is equivalent to the words “apply it,” per MPEP § 2106.05(f). The Examiner asserts that in light of the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, the claimed invention is analogous to Example 47, Claim 2.
Further, the combination of these elements is nothing more than a generic computing system with machine learning model(s). Because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP § 2106.05(f), they do not integrate the abstract idea into a practical application.
Accordingly, 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. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database to perform the steps of:
receiving a plurality of documents related to a dataset to be transformed, wherein receiving the plurality of documents includes:
receiving metadata associated with each document from the plurality of documents,
automatically identifying a document type for each document from the plurality of documents based on the metadata, to predict the document type for each document from the plurality of documents, and
applying annotations to each document based on the identified document type to produce a plurality of annotated documents related to the dataset to be transformed, wherein the annotations include a breakout between the metadata associated with each document and document text of each document; and
receiving an indication of the dataset to be transformed;
receiving the annotated documents related to the dataset to be transformed and the metadata associated with each document from the plurality of documents,
analyzing the annotations applied to each document and the metadata associated with each document to determine state data contained within each annotated document from the annotated documents related to the dataset to be transformed, wherein the state data represents one or more states of a process;
referencing the state data of the annotated documents to aggregate and organize the plurality of documents for display on a user interface
comparing the state data of the annotated documents with expected state data and identifying one or more unexpected states, wherein unexpected states comprise an anomaly with respect to the expected state data;
providing one or more options for response based on the one or more expected states, each of the one or more options for response related to the document type;
providing a probability of success for each of the one or more options for response;
receiving an indication of a selection of the one or more options for response; and
generating the organized plurality of documents and a document template associated with the selection of the one or more options for response, wherein the document template is automatically selected based on the identified document type, the breakout between the metadata and the document text, and the selection of the one or more options for response
amounts to no more than mere instructions to apply the exception using a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database. Mere instructions to apply an exception using a generic processor executing computer code stored on a computer medium (a structured analysis tool), and generic auxiliary annotation system, generic third-party database cannot provide an inventive concept.
Additionally:
Claims 2, 3, 4, 5 are directed towards descriptive subject matter, in this case, describing what the provided data is intended to indicate or include and describing the options and requirements that are available with respect to how to proceed with a patent application, as dictated by a corresponding jurisdiction.
Claim 6 is directed towards descriptive subject matter, in this case, describing information.
Claims 7, 8 are directed towards “Mental Processes” and “Certain Methods of Organizing Human Activities”, in this case, steps that are performed by a human when prosecuting/managing a patent application, as well as the recitation of generic technology at a high level of generality and applying it to the abstract idea, in this case, describing a generic graphical user interface (GUI), but failing to demonstrate any improvement, resolution of an issue that arose in generic GUI technology, or demonstration that the claimed invention is deeply rooted in technology because the generic GUI is simply retrieving, displaying, and receiving information in response to human input, e.g., actions that a human would perform manually when prosecuting a patent application.
Claim 9 is directed towards descriptive subject matter, in this case, describing an intended governmental entity, i.e. the U.S. Patent and Trademark Office
Claim 10 is directed towards descriptive subject matter, in this case, describing requirements.
The remaining claims recite similar subject matter already discussed above.
In summary, the dependent claims are simply directed towards providing additional descriptive factors that are considered for prosecuting a patent application. Accordingly, the claims are not patent eligible.
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 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.
Claims 1 – 5, 7 – 13, 15 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Lutwyche (US PGPub 2013/0238987 A1) in view of Aaltonen et al. (US PGPub 2019/0199733 A1).
In regards to claims 1, 11, Lutwyche discloses (Claim 1) a computer implemented data display and recommendation method comprising; (Claim 11) a data display and recommendation system, the system comprising:
In regards to:
a memory that stores instructions for implementing a structured analysis tool; and
one or more processors that execute the instructions for the structured analysis tool to perform operations including
(Fig. 10):
In regards to:
an auxiliary annotation system receiving a plurality of documents related to a dataset to be transformed from a third-party database, wherein receiving the plurality of documents includes:
receiving metadata associated with each document from the plurality of documents,
automatically identifying a document type for each document from the plurality of documents based on the metadata, wherein the auxiliary annotation system [predicts] the document type for each document from the plurality of documents, and
applying annotations to each document based on the identified document type to produce a plurality of annotated documents related to the dataset to be transformed, wherein the annotations include a breakout between the metadata associated with each document and document text of each document
(Fig. 2; ¶ 32, 33, 34, 35, 36, 100 wherein documents are received from Office Action documents from, for example, The U.S. Patent and Trademark Office and wherein the Office Action document types can be Rejection, Final Rejection, Advisory Action, and etc. (e.g., the Office action contains data that provides information about other data or data that describes the characteristics of data; descriptive data (i.e. metadata, https://www.merriam-webster.com/dictionary/metadata; https://web.archive.org/web/20111003133036/http://www-01.ibm.com/software/globalization/terminology/m.html) to allow the system to determine the type of office action, e.g., Final, Advisory, or etc.)). Additionally, this allows the system to determine what type of response to provide to the office action. In addition to a user providing information regarding a document, Lutwyche also discloses “The patent prosecution unit 220 also takes input from the Office Action documents 230, if any such documents exist.”;
Fig. 4A, 8G; ¶ 24, 28, 35, 99, 100, 102 wherein the system assists a user with responding to an Office Action with a corresponding response based on the type of Office Action received, e.g., the system receives a Non-Final Office Action and will prevent the user from submitting a Request for Continued Examination (RCE). The system further assists with annotating documents to be transformed, e.g., the system will transform claims set documents with status identifiers for each claim, e.g., “(Original)”, “(Canceled)”, and etc. or identifying a document as “Amendment”, “Pre-Appeal Brief Request for Review”, and etc. Further still, the system will also annotate documents to highlight potential issues that may need to be resolved. Additionally, the system will annotate documents to reflect the date in which a document is in response to or current status of claims. Finally, the system will also annotate documents to include forms that should be provided with a response or construction large portions of the response to be included in a response.;
¶ 91, 93, 94, 99, 109 wherein the Office Actions received by the system include content to allow the system to guide the user with responding to an Office Action, which is further based on the type of Office Action received by the system; Fig. 8B; ¶ 100 wherein the system marks received documents with a corresponding identifier
In other words, the system receives a document from the USPTO that includes metadata that allows the system to determine that the document is a Non-Final Office Action and additional data that identifies the content of the Non-Final Office Action, e.g., objections, rejections under a particular statute, claim language, and etc. The system utilizes the metadata to determine how to annotate additional information to the document to allow the system to store the document with information identifying the document type, e.g., Rejection, and content of the document, e.g., objections, rejections, etc., which is further utilized by the system to determine how a user is allowed to proceed, e.g., establishing due dates, applicant/attorney response types, content of the response, and etc. Although Lutwyche does not explicitly recite the terms “metadata” or “annotations”, the Examiner asserts that Lutwyche discloses equivalent subject matter, as discussed above.
Furthermore, the documents are also annotated by the system to allow the system to determine the type of Office Action document, which, in turn, allows the system to determine how a particular document should be amended. As a non-limiting example, the system receives a Non-Final Office Action, thereby resulting in the next correspondence from an applicant to include, for example, amendments to the document type that has been identified as “Claims”, which must follow a set of rules required by the USPTO (e.g., identifying a claim as “Original”, “Previously Amended”, “Cancelled”, “Currently Amended”, and etc., wherein, for example, an amended claim must not only be identified as “Currently Amended”, but the amendments must follow specific identifiers, i.e. underline for new language and strikethrough and/or double brackets for cancelled language). The Examiner asserts that this is a “breakout between the metadata associated with the document and the document text” because the system has identified a particular document with a corresponding document type, which is based on the contents of the document text, i.e. identifying the document as “Claims” because the documents are directed towards the claims and, consequently, USPTO rules that govern how claims should be drafted, amended, and the like are associated with this document type and the system will make changes, additions, deletions, identifications, and etc. based on this classification of the document type and rules that it has been determined based on the relationship between the metadata describing the document and the document text. The Examiner asserts that this is commensurate with ¶ 36, 37, 54 of the applicant’s specification.); and
a structured analysis tool configured for:
In regards to:
receiving an indication of the dataset to be transformed;
receiving the annotated documents related to the dataset to be transformed and the metadata associated with each document from the plurality of documents from the auxiliary annotation system;
analyzing the annotations applied to each document and the metadata associated with each document to determine state data contained within each annotated document from the annotated documents related to the dataset to be transformed, wherein the state data represents one or more states of a process;
referencing the state data of the annotated documents to aggregate and organize the plurality of documents for display on a user interface generated by the structured analysis tool
(Fig. 2; ¶ 32, 33, 34, 36, 100 wherein documents are received from Office Action documents from, for example, The U.S. Patent and Trademark Office and wherein the Office Action document types can be Rejection, Final Rejection, Advisory Action, and etc. (e.g., the Office action contains data that provides information about other data or data that describes the characteristics of data; descriptive data (i.e. metadata, https://www.merriam-webster.com/dictionary/metadata; https://web.archive.org/web/20111003133036/http://www-01.ibm.com/software/globalization/terminology/m.html) to allow the system to determine the type of office action, e.g., Final, Advisory, or etc.). Additionally, this allows the system to determine what type of response to provide to the office action. In addition to a user providing information regarding a document, Lutwyche also discloses “The patent prosecution unit 220 also takes input from the Office Action documents 230, if any such documents exist.”;
Fig. 4A, 8G; ¶ 24, 28, 35, 99, 100, 102 wherein the system assists a user with responding to an Office Action with a corresponding response based on the type of Office Action received, e.g., the system receives a Non-Final Office Action and will prevent the user from submitting a Request for Continued Examination (RCE). The system further assists with annotating documents to be transformed, e.g., the system will transform claims set documents with status identifiers for each claim, e.g., “(Original)”, “(Canceled)”, and etc. or identifying a document as “Amendment”, “Pre-Appeal Brief Request for Review”, and etc. Further still, the system will also annotate documents to highlight potential issues that may need to be resolved. Additionally, the system will annotate documents to reflect the date in which a document is in response to or current status of claims. Finally, the system will also annotate documents to include forms that should be provided with a response or construction large portions of the response to be included in a response.;
¶ 91, 93, 94, 99, 109 wherein the Office Actions received by the system includes content to allow the system to guide the user with responding to an Office Action, which is further based on the type of Office Action received by the system; Fig. 8B; ¶ 100 wherein the system marks received documents with a corresponding identifier;
¶ 32, 35, 36, 39, 40, 41, 48, 54, 67, 78, 86, 91, 97, 99, 105, 109 wherein the system assists and guides an applicant/applicant representative with writing up claims, analyzing claims, addresses issues/concerns/or the like associated with the claims, and reviewing office actions to determine how to proceed with an application, e.g., provide arguments, amendments, or the etc. based on the aforementioned processing performed by the system on received documents;
Fig. 7, 8B – 8E; ¶ 97 wherein the system aggregates and organizes the annotated documents, i.e. Office Action, for display to assist the user with formulating a response to the Office Action);
In regards to:
comparing the state data of the annotated documents with expected state data and identifying one or more unexpected states, wherein unexpected states comprise an anomaly with respect to the expected state data;
providing one or more options for response based on the one or more expected states, each of the one or more options for response related to the document type;
providing a probability of success for each of the one or more options for response;
(¶ 34, 35, 36, 46, 48, 52, 70, 71, 74, 75, 78, 83, 84, 86, 93, 99, 102, 109 wherein the system checks and displays anomalies with respect to various components of the dataset and provides options and recommendations to correct the anomalies, which have a corresponding probability of success in order to comply with USPTO requirements and practice based on comparing the state or point of prosecution and its associated content with the annotated documents, e.g., the claims have been rejected with a Non-Final Office Action indicating that no claims are allowable and that the claims have been rejected under 35 USC 112, 102, and 103, which is based on the system receiving the documents from the USPTO, reviewing the metadata, and annotating the document as a Non-Final Office Action, which, in turn, also limits the user on how to respond to the Non-Final Office Action (e.g., an RCE cannot be filed, the user cannot argue that the references are not combinable for a § 102 rejection, the Non-Final Office Action has identified several deficiencies under § 112 which the user has to respond to in a particular manner, and etc. (i.e. an expected state is an enabled disclosure and the office action indicates that the disclosure in not enabled (unexpected), thereby preventing a Notice of Allowance from being mailed and requiring the user to address the rejection; or the system identifying lack of antecedence issues, punctuations, grammar, or etc., informing the user if there are issues, and the probability of success (i.e. addressing the issue resolves the issue, thereby providing a 100% probability of success)));
In regards to:
receiving an indication of a selection of the one or more options for response; and
generating the user interface containing the organized plurality of documents and a document template associated with the selection of the one or more options for response, wherein the document template is automatically selected by the structured analysis tool based on the identified document type, the breakout between the metadata and the document text, and the selection of the one or more options for response
(Fig. 2; ¶ 32, 33, 34, 36, 100 wherein documents are received from Office Action documents from, for example, The U.S. Patent and Trademark Office and wherein the Office Action document types can be Rejection, Final Rejection, Advisory Action, and etc. (e.g., the Office action contains data that provides information about other data or data that describes the characteristics of data; descriptive data (i.e. metadata, https://www.merriam-webster.com/dictionary/metadata; https://web.archive.org/web/20111003133036/http://www-01.ibm.com/software/globalization/terminology/m.html) to allow the system to determine the type of office action, e.g., Final, Advisory, or etc.). Additionally, this allows the system to determine what type of response to provide to the office action. In addition to a user providing information regarding a document, Lutwyche also discloses “The patent prosecution unit 220 also takes input from the Office Action documents 230, if any such documents exist.”;
Fig. 4A, 8G; ¶ 24, 28, 35, 99, 100, 102 wherein the system assists a user with responding to an Office Action with a corresponding response based on the type of Office Action received, e.g., the system receives a Non-Final Office Action and will prevent the user from submitting a Request for Continued Examination (RCE). The system further assists with annotating documents to be transformed, e.g., the system will transform claims set documents with status identifiers for each claim, e.g., “(Original)”, “(Canceled)”, and etc. or identifying a document as “Amendment”, “Pre-Appeal Brief Request for Review”, and etc. Further still, the system will also annotate documents to highlight potential issues that may need to be resolved. Additionally, the system will annotate documents to reflect the date in which a document is in response to or current status of claims. Finally, the system will also annotate documents to include forms that should be provided with a response or construction large portions of the response to be included in a response.;
¶ 67, 78, 84, 86, 89, 91, 97, 98, 99, 109, 117, 118, 119, 120 wherein the system provides pending requirements that must be addressed in order to comply with USPTO requirements and practice and, in response, the system receives selections to address the one or more errors, issues, concerns, or etc. and provides a document, e.g., response to an office action, filing, or etc.;
¶ 67, 91, 92, 96 – 99, 100, 102, 103 – 109, 112, 117 – 119 wherein the system provides a graphical user interface (GUI), that allows the user to interact with the system, office action, invention (i.e. claims, errors, corrections, issues, concerns, responses, and etc.), and so forth and provides the user with templates that can be selected and filled in, which guide the user through the prosecution of an application, e.g., response to an office action, filing an application, and etc., as well as informing the user of any errors (or the like) that need to be addressed before filing a response;
Fig. 7, 8B – 8E; ¶ 97 wherein the system aggregates and organizes the annotated documents, i.e. Office Action, for display to assist the user with formulating a response to the Office Action
As was discussed above, the system receives a document from the USPTO that includes metadata that allows the system to determine that the document is a Non-Final Office Action and additional data that identifies the content of the Non-Final Office Action, e.g., objections, rejections under a particular statute, claim language, and etc. The system utilizes the metadata to determine how to annotate additional information to the document to allow the system to store the document with information identifying the document type, e.g., Rejection, and content of the document, e.g., objections, rejections, etc., which is further utilized by the system to determine how a user is allowed to proceed, e.g., establishing due dates, applicant/attorney response types, content of the response, and etc. Although Lutwyche does not explicitly recite the terms “metadata” or “annotations”, the Examiner asserts that Lutwyche discloses equivalent subject matter, as discussed above.
Furthermore, the documents are also annotated by the system to allow the system to determine the type of Office Action document, which, in turn, allows the system to determine how a particular document should be amended. As a non-limiting example, the system receives a Non-Final Office Action, thereby resulting in the next correspondence from an applicant to include, for example, amendments to the document type that has been identified as “Claims”, which must follow a set of rules required by the USPTO (e.g., identifying a claim as “Original”, “Previously Amended”, “Cancelled”, “Currently Amended”, and etc., wherein, for example, an amended claim must not only be identified as “Currently Amended”, but the amendments must follow specific identifiers, i.e. underline for new language and strikethrough and/or double brackets for cancelled language). The Examiner asserts that this is a “breakout between the metadata associated with the document and the document text” because the system has identified a particular document with a corresponding document type, which is based on the contents of the document text, i.e. identifying the document as “Claims” because the documents are directed towards the claims and, consequently, USPTO rules that govern how claims should be drafted, amended, and the like are associated with this document type and the system will make changes, additions, deletions, identifications, and etc. based on this classification of the document type and rules that it has been determined based on the relationship between the metadata describing the document and the document text. The Examiner asserts that this is commensurate with ¶ 36, 37, 54 of the applicant’s specification.).
Lutwyche discloses a system and method that manages and guides an applicant or their representative through the patent prosecution process and provides a plethora of information regarding a patent application to determine how to proceed with its prosecution. Despite this, Lutwyche fails to disclose the use of machine learning to assist with the process.
To be more specific, Lutwche fails to explicitly disclose:
automatically identifying a document type for each document from the plurality of documents based on the metadata, wherein the auxiliary annotation system uses a machine learning model trained on previously identified documents to predict the document type for each document from the plurality of documents
However, Aaltonen teaches a similar system and method for assisting users with performing intellectual property tasks, such as, but not limited to, the prosecution of a patent application, but further teaches that it would have been beneficial to utilize machine learning. Specifically, Aaltonen teaches:
“In recent years, there has been considerable development in artificial intelligence (AI) systems that mimic cognitive processes of human beings. … On account of costly patent attorneys performing routine tasks in the aforementioned “cottage industry” of small IP firms that presently pertains (for example in the United Kingdom, due to ineffectiveness and “closed shop” practices that were earlier promoted by organisations such as CIPA), use of AI is potentially technologically highly disruptive.”
(¶ 27)
“The present disclosure seeks to provide an improved system for use in interfacing with IP specialists, for providing support to such specialists, and for lowering a cost of procuring IP rights, yet maintaining a consistent and high standard in the delivery of associated services from the IP specialists, for example patent attorneys, patent advisors and similar, for example by employing artificial intelligence (AI) based services.”
(¶ 29)
“Moreover, the present disclosure seeks to provide an improved method of using aforementioned systems for providing advanced IP services, for example by employing artificial intelligence (AI) based services.”
(¶ 30)
“Optionally, the method includes arranging for the data management system to be configured for drafting revising and submitting patent application documents to one or more patent offices.”
(¶ 58)
“Teaching the artificial intelligence (AI) cognitive engine 6000 is akin to teaching a normal cognitive human being and can be implemented using patent texts, patent diagrams, prior art documents, substantive examination reports and similar.”
(¶ 400)
“Moreover, it will be appreciated that the potential states of the machines 7000 is dynamically variable with time as the artificial intelligence cognitive engine 6000 is taught new procedures, exposed to new tasks, exposed to new documents and so forth.”
(¶ 406)
One of ordinary skill in the art would have found it beneficial to incorporate the teachings of Aaltonen, i.e. training machine learning on intellectual property related documents to identify and determine how to proceed with the prosecution of a patent application, into the system and method of Lutwyche because this would provide support for specialists and lower cost for procuring IP rights, while maintaining a consistent and high standard of delivery of associated services from IP specialists.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to incorporate the non-machine learning based patent prosecution system and method of Lutwyche with machine learning, as taught by Aaltonen, because this would provide support for specialists and lower cost for procuring IP rights, while maintaining a consistent and high standard of delivery of associated services from IP specialists.
Further, one of ordinary skill in the art of patent prosecution would have found it obvious to update the more manual, user dependent, or non-machine learning process of Lutwyche using modern electronic components, as taught in Aaltonen, in order to gain the commonly understood benefits of such adaptation, such as, reduced cost, efficiency, and speed.
Accommodating the prior arts more manual and antiquated process with modern electronics, in this case, using machine learning that has been trained on intellectual property related documents to assist a user with identifying and determining how to response or proceed with a patent application, would have been obvious. As stated in Leapfrog, “applying modern electronics to older mechanical devices has been commonplace in recent years.”
In regards to claims 2, 17, the combination of Lutwyche and Aaltonen discloses a method of claim 1 (the system of claim 11), wherein the state data comprises an indication of pending, no first action, rejected, allowed, objected to, or combinations thereof (¶ 44 regarding no first action and patented claims; (at least) ¶ 91 regarding pending, objected, rejected claims; (at least) ¶ 97 (pending claims)).
In regards to claims 3, 18, the combination of Lutwyche and Aaltonen discloses a method of claim 2 (the system of claim 17), wherein the state data includes details of each of the one or more states of the process (in addition to the citations provided above, see also, at least, ¶ 43, 44, 86, 97 wherein the state data includes details of each of the states of the process).
In regards to claims 4, 15, the combination of Lutwyche and Aaltonen discloses a method of claim 1 (the system of claim 11), wherein providing one or more options for response comprises providing a choice for a user to file a response, to file an amendment, to file a petition, to file a continuation, to file a divisional, to file a request for continued examination, to file an appeal, to file a communication, to extend, to defer, or combinations thereof (¶ 102, 117, 119 wherein an option provided to the user to choose can be, for example, file a response).
In regards to claims 5, 16, the combination of Lutwyche and Aaltonen discloses a method of claim 1 (the system of claim 11), further comprising providing one or more pending requirements for the dataset, wherein the one or more pending requirements for the dataset comprises one or more of formal drawings, response to rejections, formal documents, or combinations thereof (¶ 67, 78, 84, 86, 89, 91, 97, 98, 99, 109, 117, 118, 119, 120 wherein the system provides pending requirements that must be addressed in order to comply with USPTO requirements and practice and, in response, the system receives selections to address the one or more errors, issues, concerns, or etc. and provides a document, e.g., response to an office action, filing, or etc.; ¶ 91, 99, 103, 117, 102, 109 wherein the one or more pending requirements for the dataset comprises one or more of formal drawings, response to rejections, formal documents, or combinations thereof; ).
In regards to claims 7, 12, the combination of Lutwyche and Aaltonen discloses a method of claim1 (the system of claim 11), further comprising:
preparing a response room user interface including the organized plurality of documents;
proposing one or more templates for use within the response room, each of the one or more templates related to an action required in the dataset;
receiving a selection of a template from the one or more templates;
verifying the selection of the template and making suggestions based on the selection;
receiving a completed template from a user, and cross-checking the completed template; and
proofing the completed template
(¶ 67, 91, 92, 96 – 99, 100, 102, 103 – 109, 112, 117 – 119 wherein the system provides a graphical user interface (GUI), i.e. “response room”, that allows the user to interact with the system, office action, invention (i.e. claims, errors, corrections, issues, concerns, responses, and etc.), and so forth and provides the user with templates that can be selected and filled in, which guide the user through the prosecution of an application, e.g., response to an office action, filing an application, and etc., as well as informing the user of any errors (or the like) that need to be addressed before filing a response;
Fig. 7, 8B – 8E; ¶ 97 wherein the system aggregates and organizes the annotated documents, i.e. Office Action, for display to assist the user with formulating a response to the Office Action).
In regards to claims 8, 13, the combination of Lutwyche and Aaltonen discloses a method of claim 7 (the system of claim 11), further comprising:
receiving a document in the response room, the document prepared for filing with a governmental entity;
analyzing the document with the structured analysis tool to determine one or more parameters associated with the document;
choosing a standard response template based on the one or more parameters associated with the document, wherein the standard response template includes a plurality of requirements for filing the document with the governmental entity;
verifying, using the standard response template, that the document fulfills the plurality of requirements; and
displaying a report, in the response room, indicating if one or more of the plurality of requirements are not met
(¶ 67, 91, 92, 96 – 99, 100, 102, 103 – 109, 112, 117 – 119 wherein the system provides a graphical user interface (GUI), i.e. “response room”, that allows the user to interact with the system, office action, invention (i.e. claims, errors, corrections, issues, concerns, responses, and etc.), and so forth and provides the user with templates that can be selected and filled in, which guide the user through the prosecution of an application, e.g., response to an office action, filing an application, and etc., as well as informing the user of any errors (or the like) that need to be addressed before filing a response).
In regards to claims 9, 20, the combination of Lutwyche and Aaltonen discloses a method of claim 8 (the system of claim 13), wherein the governmental entity is the U.S. Patent and Trademark Office (¶ ¶ 118 wherein the governmental entity is the U.S. Patent and Trademark Office).
In regards to claims 10, 19, the combination of Lutwyche and Aaltonen discloses a method of claim 8 (the system of claim 13), wherein the plurality of requirements includes one or more of formatting and content requirements (¶ 46, 69, 78, 84, 91, 118 wherein the plurality of requirements includes one or more of formatting and content requirements).
______________________________________________________________________
Claims 6, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Lutwyche (US PGPub 2013/0238987 A1) in view of Aaltonen et al. (US PGPub 2019/0199733 A1) in further view of Germeraad (WO 01/73657 A1).
In regards to claims 6, 14, the combination of Lutwyche and Aaltonen discloses a system and method that manages and guides an applicant or their representative through the patent prosecution process and provides a plethora of information regarding a patent application to determine how to proceed with its prosecution. Despite this, the combination of Lutwyche and Aaltonen fails to disclose all types of information, i.e. remaining patent term.
To be more specific, the combination of Lutwyche and Aaltonen
a method of claim 1 (the system of claim 11), wherein the state data further comprises information regarding a remaining patent term.
However, Germeraad, which is also directed towards managing a patent, further teaches that it is old and well-known in the art to provide a user with information regarding the remaining patent term. Germeraad teaches that such information is useful to a user as this allows the user to determine how to proceed with a particular patent, understand how competitor can potentially erode margins, the usefulness of the patent to the user, and so forth. One of ordinary skill in the art would have found it obvious and beneficial that providing as much information about a patent would result in allowing a user to better understand and decide how to proceed with a particular patent.
(For support see: Fig. 139 – 143; Page 97 – 99 Sections A – D)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in the patent management system and method of the combination of Lutwyche and Aaltonen with information regarding the remaining paten term, as taught by Germeraad as it would have been beneficial to a user who is using a patent management system and method to better understand and decide how to proceed with a particular patent.
Response to Arguments
Applicant's arguments filed 8/7/2026 have been fully considered but they are not persuasive.
Rejection under 35 USC 101
The rejection under 35 USC 101 has been maintained.
The Examiner asserts that “providing ‘a breakout between the metadata and the document text’” is not an improvement to technology, resolving an issue that arose in technology, or deeply rooted in technology, but directed towards the abstract idea of collecting and organizing information. The Examiner asserts that the arguments and applicant’s cited paragraphs from their specification are directed towards activities that a human can perform using pen and paper because the amendments amount to a human reviewing a document and annotating the document for organization, classification, and/or handling purposes. In this case, the invention amounts to a human receiving a “Non-Final Office Action” from The United States Patent and Trademark Office (USPTO) and writing down on the document itself, a sticky note, or etc. that the document is a “Non-Final Office Action” because of the information describing the document, e.g., document PTO-326, and the contents of the document, i.e. the office action write-up. As another example, a human can look at a set of claims and determine by visual confirmation on whether the claims are the original claims or amended claims and can write down onto the document itself, using a sticky note, placing the document in a document holder reserved for claims, or etc. that the document is, for example, amended claims based on the fact that there are annotations in the claims in response to the previous office action that was received. The Examiner asserts that the recited annotation “breakout” is equivalent to a human writing down information (or verbally informing another human) based on information that describes the contents of the document and the document text so that the human (or another human) can determine, for example, the document type, what rules apply to the document, how to handle the document, and etc., in this case, for example, which USPTO rules should be applied to the document.
Finally, with regards to Ex Parte Desjardins and Enfish, the Examiner refers to and incorporates the response provided in the Non-Final Rejection mailed on 5/7/2026. The Examiner asserts that the applicant’s arguments are conclusory statements that fail to specifically point out where the Examiner has erred in the rejection, as well as failing to point out what specific elements of the claimed invention overcome the rejection provided under 35 USC 101 and why. Although the applicant has cited Ex Parte Desjardins and Enfish, the Examiner asserts that the applicant has failed to link the legal concepts to the facts of the application under examination. As such, since the applicant has failed to point out the supposed errors in the Examiner’s rejection, the provided remarks do not comply with 37 CFR 1.111(b).
Rejection under 35 USC 102/103
The Examiner asserts that the applicant’s arguments are directed towards newly amended limitations and are, therefore, considered moot. However, the Examiner has responded to the newly submitted amendments, which the arguments are directed to, in the rejection above, thereby addressing the applicant’s arguments.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure can be found in the attached PTO-892 Notice of References Cited.
Lundberg et al. (US Patent 12,664,170 B2); Lundberg et al. (US Patent 12,639,318 B2); George (US Patent 12,669,924 B2); Brockman et al. (US Patent 11,100,151 B2); Brockman et al. (US Patent 11,977,722 B2); Southgate (US PGPub 2016/0232632 A1) – which disclose systems for assisting with the patent application prosecution process
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARDO ARAQUE JR whose telephone number is (571)272-3747. The examiner can normally be reached Monday - Friday 8-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. 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.
GERARDO ARAQUE JR
Primary Examiner
Art Unit 3629
/GERARDO ARAQUE JR/Primary Examiner, Art Unit 3629 8/24/2026
Prosecution Insights