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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 17, 2026 has been entered.
Status of Claims
Claims 1, 5, 11, 16 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; 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 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; 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 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; 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 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
(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
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, and etc. The system utilizes the metadata 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.); 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 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).
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 3/17/2026 have been fully considered but they are not persuasive.
Claim Objection
The objection to the claims has been withdrawn due to amendments.
Rejection under 35 USC 101
The rejection under 35 USC 101 has been maintained.
The Examiner asserts that Desjardins and Enfish are not applicable to the claimed invention because unlike Desjardins and Enfish, the claimed invention is not improving any technology, resolving an issue that arose in technology, or deeply rooted in technology.
Unlike Enfish, where the claims were directed to a specific improvement to the computer’s functionality at the time of the invention and where Enfish explicitly defined the specific improvements along with the technical aspects of the improvements to demonstrate the improvements to existing technology, the Examiner asserts that the instant invention does not. In order to determine whether the claimed invention is directed towards an abstract idea and/or that it is “significantly more” than the abstract idea, Alice stated that the following considerations must be taken into account before making this determination. Specifically, in Enfish, LLC v Microsoft Corporation, Fiserv, Inc., Intuit, Inc., Sage Software, Inc., Jack Henry & Associates, Inc. the courts stated the following:
“We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two. Indeed, some improvements in computer-related technology when appropriately claimed are undoubtedly not abstract, such as a chip architecture, an LED display, and the like. Nor do we think that claims directed to software, as opposed to hardware, are inherently abstract and therefore only properly analyzed at the second step of the Alice analysis. Software can make non-abstract improvements to computer technology just as hardware improvements can, and sometimes the improvements can be accomplished through either route. We thus see no reason to conclude that all claims directed to improvements in computer-related technology, including those directed to software, are abstract and necessarily analyzed at the second step of Alice, nor do we believe that Alice so directs. Therefore, we find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis.”
“For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. … In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”
(Page 11)
Enfish provided a background on the state of the art, at the time of the invention, in the technology, namely, with regards to the management of information in a computer database. This served as reference material in order to identify the improvement or, more specifically, establish that the claimed invention of Enfish was deeply rooted in the technology and was seeking to remedy a problem that arose from the technology. That is to say, Enfish provided a background explanation with regards to the state of the art to establish the flaws that arose from data management and demonstrated that the inventive concept of Enfish laid with the improvement of this technology. It was established in Enfish that the claimed invention did not contain an abstract idea because it was not directed towards a fundamental economic practice, a method of organizing human activities, an idea of itself, or mathematical relationships/formulas because the inventive concept was directed towards the improvement of the technology, specifically, i.e. although the invention was directed towards the organization of information the invention of Enfish was not simply relying on or applying concepts known in the technical field or describing the use of generic devices and technologies to perform an abstract idea, but was, in fact, directed and seeking to improve upon the technology by addressing issues known in the technology. This was further made evident by the disclosure presented in the specification of Enfish, which the courts stated the following:
“The patents teach that multiple benefits flow from this design. First, the patents disclose an indexing technique that allows for faster searching of data than would be possible with the relational model. See, e.g., ’604 patent, col. 1 ll. 55–59; id. at col. 2 l. 66–col. 3 l. 6. Second, the patents teach that the self-referential model allows for more effective storage of data other than structured text, such as images and unstructured text. See, e.g., ’604 patent, col. 2 ll. 16–22; col. 2 ll. 46–52.”
(Page 7)
“Finally, the patents teach that the self-referential model allows more flexibility in configuring the database. See, e.g., ’604 patent, col. 2 ll. 27–29. In particular, whereas deployment of a relational database often involves extensive modeling and configuration of the various tables and relationships in advance of launching the database, Enfish argues that the self-referential database can be launched without such tasks and instead configured on-the-fly. See Oral Argument at 1:00–2:15 http://oralarguments.cafc.ucsourts.gov/default.aspx?fl=20 15-1244.mp3; see also ’604 patent, col. 7 ll. 10–22. For instance, the database could be launched with no or only minimal column definitions.”
(Page 7)
Here, the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self-referential table for a computer database. … (“The present invention improves upon prior art information search and retrieval systems by employing a flexible, selfreferential table to store data.”)
(Pages 14 – 15)
The specification also teaches that the self-referential table functions differently than conventional database structures. According to the specification, traditional databases, such as “those that follow the relational model and those that follow the object oriented model,” ’604 patent, col. 1 ll. 37–40, are inferior to the claimed invention. While “[t]he structural requirements of current databases require a programmer to predefine a structure and subsequent [data] entry must conform to that structure,” id. at col. 2 ll. 10–13, the “database of the present invention does not require a programmer to preconfigure a structure to which a user must adapt data entry.” Id. at col 2 ll. 27–29. Moreover, our conclusion that the claims are directed to an improvement of an existing technology is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirements. See id. at col 2 ll. 23–27; see also Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513–14 (Fed. Cir. 2015) (finding that a specification’s disparagement of the prior art is relevant to determine the scope of the invention).
(Page 15)
In addition to what has been discussed above and with regards to Desjardins, the Examiner asserts that the claimed invention is not directed towards improving machine learning technology, resolving an issue that arose in machine learning technology, or deeply rooted in machine learning technology. This is further evident by the fact that the claimed invention is applying a “trained” machine learning model. Even if the claims were amended to recite “training”, the Examiner asserts that that unlike Desjardins, whose disclosure was directed towards the improvement of machine learning technology, the specification of the instant application has only recited machine learning at a high level of generality and applying it to the abstract idea. Specifically, ¶ 33, 44 of the applicant’s specification are the only locations in the specification where machine learning is discussed and upon further review of the specification, the Examiner asserts that the claimed and disclosed invention are not concerned with identifying, improving, or resolving an issue in machine learning technology, let alone being rooted in machine learning technology, but reciting machine learning technology at a high level of generality and applying it to the abstract idea. 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.
The claimed invention provides no software or hardware improvements nor is it directed towards improving any technology, but directed towards reciting generic technology at a high level of generality and applying it to the abstract idea, wherein the abstract idea can be performed by humans in their mind and/or with the aid of pen and paper. The claimed invention is directed towards activities that, for example, patent attorneys perform when prosecuting a patent application with an IP authority, such as, but not limited to, the USPTO. The claimed invention is applying the generic technology for the benefits that it provides, i.e. faster, more efficient, and the like, and not directed towards improving the technology. The disclosed and claimed invention are not directed towards improving the databases or machine learning, but utilizing generic technology to handle “large incoming” data because computers are faster and more efficient.
Rejection under 35 USC 102
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.
Pertinent Arguments
The applicant argues that Lutwyche does not disclose the equivalent feature of “metadata” or “annotations.”
However, the Examiner respectfully disagrees.
Lutwyche discloses at 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.”
Lutwyche further discloses 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.
Therefore, Lutwyche does, indeed, disclose the equivalence of “metadata” and “annotations”. Moreover, Lutwyche not only discloses that documents can be identified by user input, but by taking input from an office action to determine the type of office action it is and guiding a user as to the type of response that should be provided.
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 (US PGPub 2026/0030701 A1); Ma (US PGPub 2026/0030702 A1); Grainger (US PGPub 2002/0111824 A1); Gross (US PGPub 2012/0191619 A1); Gross (US PGPub 2017/0039663 A1); Lundberg (US PGPub 2023/0018572 A1) – which disclose systems and methods to assist a user with analyzing and managing intellectual property
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 5/4/2026
Prosecution Insights