DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive.
Regarding the 35 U.S.C. 101 rejection of the claims, Applicant argues that an ordinary artisan would be unable to identify a particular section of an electronic document stored in a repository without requiring retrieval thereof, according to claimed language “identifying, from a data repository including a plurality of electronic documents, at least one data section for each of the plurality of individual queries, each of the at least one data section relating to a page in an electronic document among the plurality of electronic documents, wherein the identifying occurs at the data repository without requiring retrieval of the electronic document”, and that given the 2019 revised Subject matter Eligibility (SME), the August 2025 memorandum on SME as well as the “101 Reminders”, the claims are not directed to the mental processes grouping of abstract ideas (Arguments, pg. 12, fourth para. -pg. 16, second para.). Examiner respectfully disagrees.
As identified below, the claims include receiving at least one request, each of the at least one request including a question in a natural language format (i.e., a data gathering step), generating, a plurality of individual queries based on the question, each of the plurality of individual queries corresponding to a stand-alone component of the question (i.e., a data analysis/evaluation step), decomposing the question into the plurality of individual queries (i.e., a data analysis/evaluation step), identifying at least one query characteristic for each of the plurality of individual queries, the at least one query characteristic including at least one from among a name characteristic and a time characteristic (i.e., a data analysis/evaluation step), associating the at least one query characteristic with a corresponding query among the plurality of individual queries (i.e., a data analysis/evaluation step), identifying, from a data repository including a plurality of electronic documents, at least one data section for each of the plurality of individual queries, each of the at least one data section relating to a page in an electronic document among the plurality of electronic documents, wherein the identifying occurs at the data repository without requiring retrieval of the electronic document (i.e., a data analysis/evaluation step), determining, contextual information for each of the plurality of individual queries from the corresponding at least one data section identified from the data repository (i.e., a data analysis/evaluation step), and generating, a response for each of the at least one request based on the plurality of individual queries and the corresponding contextual information, wherein the response includes a plurality of graphical elements that visually represents relationships and hierarchies of the plurality of electronic documents (i.e., a data analysis/judgement/post solutional step), corresponding to data gathering, analysis and post solutional steps of generating/displaying data as a result of the analysis without significantly more, and achievable by a human mentally/manually analyzing data, and as such, the mental processes category of abstract ideas, consistent with the 2019 Revised Patent Subject Matter Eligibility Guidance. A human/librarian provided with page context or an index of a collection of documents/books along with their pages and locations within a library/collection can identify the pages/locations of such documents/books without having to retrieve the documents/books. That the argued claimed limitation is performed with a processor, does not negate the idea that it is a mental step achievable by a human that is being tied to a generic computer according to Applicant’s claim language.
This judicial exception is not integrated into a practical application because the claims are directed to an abstract idea with additional generic computer elements, where the generically recited computer elements (“by the at least one processor using a first/second/third model, “processor is configured to…”, “causes the processor to…”, user interface, data repository, device, memory, first model, second model, third model, interface, medium) do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a generic computer.
Also, unlike the 101 reminders, the instant claims do not include an explicit disclosure of an AI model nor training such model to perform unconventional steps. Instead, the independent claims recite generic first, second and third models that may include a mathematical and a process model among other types of models as identified in dependent claim 9.
Applicant further argues that by utilizing three separate models, as opposed to a single model, computing operations are efficiently performed quicker, and that training of the models may be performed asynchronously as different frequencies depending on efficiency needs and that the identification without retrieval of the documents would reduce network traffic, and as such, argues that claims provide an improvement to a respective technological field (Arguments, pg. 16, third para. – pg. 17).
Examiner respectfully disagrees as there is no evidence provided to support these technological improvements in the claim language or in the original disclosure by Applicant. Also, the identified efficiency, quicker processing and reduced network traffic improvements are not benefits to computer/repository but are instead benefits that arise from performing an abstract idea in conjunction with a well-known database structure.” See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, at 1288 (Fed. Cir. 2018), and further corresponds to using a generic computer to perform an abstract idea faster than a human can (see Bancorp, 687 F.3d at 1279; see also CLS Bank Int'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“Simply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”), aff’d, 573 U.S. 208 (2014). Furthermore, separately performing analysis steps with 3 generic models that are implemented by a processor does not provide an improvement to the functioning of the processor.
Applicant’s arguments regarding the prior art rejection of the claims (Arguments, pg. 18-20) have been considered but are moot in light of new grounds of rejection as provided below.
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, 2, 4-11 and 13-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of text/request analysis without significantly more. The claims 1, 10 and 19 recite the steps of: receiving, by the at least one processor via a graphical user interface, at least one request, each of the at least one request including a question in a natural language format (i.e., a data gathering step), generating, by the at least one processor using a first model, a plurality of individual queries based on the question, each of the plurality of individual queries corresponding to a stand-alone component of the question (i.e., a data analysis/evaluation step), wherein the generating of the plurality of individual queries further comprises: decomposing, by the at least one processor using the first model, the question into the plurality of individual queries (i.e., a data analysis/evaluation step), identifying, by the at least one processor using the first model, at least one query characteristic for each of the plurality of individual queries, the at least one query characteristic including at least one from among a name characteristic and a time characteristic (i.e., a data analysis/evaluation step), and associating, by the at least one processor, the at least one query characteristic with a corresponding query among the plurality of individual queries (i.e., a data analysis/evaluation step), identifying, from a data repository including a plurality of electronic documents, at least one data section for each of the plurality of individual queries, each of the at least one data section relating to a page in an electronic document among the plurality of electronic documents, wherein the identifying occurs at the data repository without requiring retrieval of the electronic document (i.e., a data analysis/evaluation step), determining, by the at least one processor using a second model, contextual information for each of the plurality of individual queries from the corresponding at least one data section identified from the data repository (i.e., a data analysis/evaluation step), and generating, by the at least one processor using a third model, a response for each of the at least one request based on the plurality of individual queries and the corresponding contextual information, wherein the response includes a plurality of graphical elements that visually represents relationships and hierarchies of the plurality of electronic documents (i.e., a data analysis/evaluation/judgement step), corresponding to steps achievable by a human in analyzing natural language requests and generating a response based on the requests, and as such the steps correspond to the mental processes category of abstract ideas.
This judicial exception is not integrated into a practical application because the claims are directed to an abstract idea with additional generic computer elements, where the generically recited computer elements (“by the at least one processor using a first/second/third model, “processor is configured to…”, “causes the processor to…”, user interface, data repository, device, memory, first model, second model, third model, interface, medium) do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because step “generating, by the at least one processor using a third model, a response for each of the at least one request based on the plurality of individual queries and the corresponding contextual information, wherein the response includes a plurality of graphical elements that visually represents relationships and hierarchies of the plurality of electronic documents” correspond to the well-understood, routine, conventional computer functions of “gathering and analyzing information using conventional techniques and displaying the result” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” as recognized by the court decisions listed in MPEP § 2106.05, and as presented in cited references Heller, Duggirala and Dasdan.
The dependent claims also recite mental processes and do not add significantly more than the abstract idea and are as such similarly rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 4-11 and 13-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In particular, claims 1, 10 and 19 recite limitation “identify, from a data repository including a plurality of electronic documents, at least one data section for each of the plurality of individual queries, each of the at least one data section relating to a page in an electronic document among the plurality of electronic documents, wherein the identifying occurs at the data repository without requiring retrieval of the electronic document”. Applicant points to at least para. [0087]-[0088] of the original specification as providing support for the limitation.
However, the portions as well as sections [0009]-[0010], [0018]-[0019] and [0089] describe data sections being identified from a data repository/corpus of electronic documents by retrieving the electronic documents and according to a retrieval step, where the identification relates to the retrieval step that identifies data in the repository, as well as using queries to identify pages from reports that include relevant data. The specification does not provide support for identifying the data sections/pages (of the electronic document) without requiring retrieval of the electronic document (that includes the pages/data sections of the documents) nor an identification that occurs at the repository. The dependent claims are rejected based on their dependency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO 892 form.
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.
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/OLUJIMI A ADESANYA/Primary Examiner, Art Unit 2658