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 .
Status of Application
No claims have been amended/submitted.
No remarks have been submitted.
Claims 1 – 20 are pending and have been examined.
This action is made FINAL ON FIRST ACTION. See MPEP 706.07(b).
The Examiner would like to note that this application is now being handled by Examiner Ivonnemary Rivera González.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 7, 2026, has been entered.
Response to Arguments
Applicant's arguments last filed on November 26, 2025 have been fully considered but they are not persuasive.
To provide clarity on the record and advance compact prosecution, the Examiner has included Examiner responses made on last advisory action filed on December 30, 2025 that are still applicable to the latest Applicant arguments filed on November 26, 2025 since no new remarks were made/submitted by the Applicant.
Applicant's arguments filed with respect to the rejection of the claims under 35 USC 101 have been fully considered but they are not persuasive. The rejection below has been modified to account for the submitted amendments to the claims (from the last advisory action) and corresponding arguments are specifically addressed below.
Regarding the applicant's arguments against the 101 rejection of pending claims on pages 12-40: Applicant’s arguments directed to 101 analysis were considered from the last advisory action filed on December 30, 2025. However, these arguments are not persuasive and the examiner respectfully disagrees for the following reasons:
For Step 1 starting in p. 12: The Applicant argues:
The Claims Recite a Specific Technological Solution to Technical Problems in Patent Management Systems:
The claimed invention addressed technical problems specific to patent management database systems alleging the claims address concrete technological challenges that arise specifically in the realm of distributed patent management systems. Examiner respectfully disagrees and asserts that the claims are merely using the claimed computing elements of a "network", "interface", distributed database", "machine learning analytics", "API", and "processors", as tools to implement the abstract idea of patent management are merely performing a mental process in a computer environment.
The claims are directed to improvements in computer technology similar to Enfish/McRO. Examiner respectfully disagrees. Addressed below.
The claims recite specific technological processes, no generic computer implementations (McRO). Examiner respectfully disagrees. Addressed below.
The claims are necessarily rooted in computer technology (DOR holdings). Examiner respectfully disagrees. Addressed below.
The claims do no preempt all ways of performing patent docketing. Examiner respectfully disagrees. Addressed below.
The Examiner's Characterization Improperly Oversimplifies the Claims
Examiner Fails to Account for Specific Claim Requirements Examiner respectfully disagrees and asserts that the claims and associated additional elements were addressed in the rejection.
Examiner Improperly Relies on Previous Board Decision Examiner respectfully disagrees that the previous board decision regarding similar claim language and structure but for the machine learning is still pertinent to the prosecution of the amended claim language and applicable in the rejection.
The Claims Do Not Recite Mental Processes
The human mind is not equipped to Perform the Claimed Steps and
The claims require Specific Computer Functionality beyond mental processes. Examiner respectfully disagrees. Addressed below.
The Claims Do Not Merely Organize Human Activity
Applicant relies on a description of the invention relying solely on technical aspects of the invention without using any language directed to the fact that the system is used to docketing legal cases. Examiner respectfully disagrees and submits the claims are directed to methods of organizing human activity as defined by the MPEP. Further Addressed below.
For Step 2A-Prong 1 and Prong 2 starting in p. 21: Initially, claims are directed in part to the identified judicial exceptions in the form of an abstract idea. The claims are directed to receiving data related to patent office procedures as well as previous docketing activities, processing those docketing activities, storing the activity information and using the activity information to determine the next probably docket activity. This is tied heavily into certain method of organizing human activity such as business and legal interactions, risk management, following steps or set of rules/procedures, as well as being directed to a mental process in that the system is receiving docket information, processing docket information based on stored rules, and identifying the next probable activity to display to the user. Examiner notes that the claims are directed to an abstract idea under Step 2A prong 1).
The claims are more similar to Electric Power Group and Classen. Specifically, claims do recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); and a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen lmmunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011).
Furthermore, claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer's shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").
An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower's credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimerv. HP, Inc., 881 F .3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53. Thus, these claims are merely using the computing elements as a tool to perform the mental process similar to the application found in Mortgage Grader and Berkheimer.
Furthermore, an example of a case identifying a mental process performed in a computer environment as an abstract idea is FairWarning IP, LLC v. latric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient's personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296.
Further, Applicant argues that the claims recite significantly more than any abstract idea and amount to an "inventive concept". Applicant argues:
The Claims Recite an Unconventional Technological Arrangement (BASCOM)
Alleging distributed architecture, data acquisition, data processing, machine learning, template application and user interface amounts to an inventive concept and technological improvement similar to BASCOM. Examiner respectfully disagrees. Addressed further below.
The Claims Improve Computer Functionality and Database Technology (Enfish)
Alleging standardized formatting, maintaining records automatically, and maintaining rules and storing updates amounts to improved technology. Examiner respectfully disagrees. Addressed further below.
The Claims Recite Specific Machine Learning Implementation (July 2024 AI-SME Examples)
Alleging the claims are similar to that of Claim 3 of Example 47. Examiner respectfully disagrees. Examiner notes that that the claimed invention is more similar to Claim 2 of Example 47 in that the system is processing information for the display of the result (next probable activity). Furthermore, Applicant is directed to Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023), in which the Court decided in a case with a more specific use of machine learning than instant application that the claims involving a trained model updating upon new information amounts to merely applying the known computer elements as a tool to implement the method. The claimed invention is similar to the claims found within Recentive in that the model is being trained to output information and the instant application is similar to the identified use of "training" a model. No improvement to the overall method of machine learning or algorithm is presented. The mere use of machine learning as a tool to update a document does not render the claims patentable subject matter. "Considering the focus of the disputed claims, Alice, 573 U.S. at 217, it is clear that they are directed to ineligible, abstract subject matter. Recentive has repeatedly conceded that it is not claiming machine learning itself. See Appellant's Br. 45; Transcript at 26:14-15. Both sets of patents rely on the use of generic machine learning technology in carrying out the claimed methods for generating event schedules and network maps. See, e.g., '367 patent, col. 6 II. 1-5, col. 11-12; '811 patent, col. 3, I. 23, col. 5 I. 4. The machine learning technology described in the patents is conventional, as the patents' specifications demonstrate. See, e.g., '367 patent, col. 6 II. 1-5 (requiring "any suitable machine learning technology ... such as, for example: a gradient boosted random forest, a regression, a neural network, a decision tree, a support vector machine, a Bayesian network, [or] other type of technique"); '811 patent, col. 3 I. 23 (requiring the application of "any suitable machine learning technique.")." (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)). "Instead of disclosing "a specific implementation of a solution to a problem in the software arts," Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), or "a specific means or method that solves a problem in an existing technological process," Koninklijke, 942 F.3d at 1150, the only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment." (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)). "the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved. We have consistently held, in the context of computer-assisted methods, that such claims are not made patent eligible under§ 101 simply because they speed up human activity. See, e.g., Content Extraction, 776 F.3d at 1347; DealerTrack, 674 F.3d at 1333. Whether the issue is raised at step one or step two, the increased speed and efficiency resulting from use of computers (with no improved computer techniques) do not themselves create eligibility. See, e.g., Trinity Info Media, LLC v. Covalent, Inc., 72 F.4th 1355, 1363 (Fed. Cir. 2023) (rejecting argument that "humans could not mentally engage in the 'same claimed process' because they could not perform 'nanosecond comparisons' and aggregate 'result values with huge numbers of polls and members"') (internal citation omitted); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (holding claims abstract where "[t]he only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task"); compare McRo, 837 F.3d at 1314- 16 (finding eligibility of claims to use specific computer techniques different from those humans use on their own to produce natural-seeming lip motion for speech)" (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)).
Similar to Recentive "nothing in the claims, whether considered individually or in their ordered combination, that would transform the Machine Learning Training and Network Map patents into something " significantly more" than the abstract idea of generating event schedules and network maps through the application of machine learning. See SAP Am., 898 F.3d at 1169-70; Broadband iTV, 113 F.4th at 1372. Recentive has also failed to identify any allegation in its complaint that would suffice to plausibly allege an inventive concept to defeat Fox's motion to dismiss. Trinity, 72 F.4th at 1365" (Recentive Analytics vs. Fox Corp., 692 F.Supp.3d 438 (D. Del. 2023)). Examiner notes that the claims are similar to the identified unpatentable subject matter in that the system is merely applying standard machine learning elements in the patent management.
The Ordered Combination Provides Significantly More (Diamond v. Diehr)
Examiner respectfully disagrees. Addressed further below.
The Claims Transform Data and Improve a Technical Field
Alleging parsing, normalizing, and processing data amounts to an improved technological field of data processing computer elements. Examiner respectfully disagrees.
Alleging improvements to technical field of patent management by applying machine learning based predictions. Examiner respectfully disagrees.
Applicant argues that the technological improvement is reflected by "distributed database architecture, APl-based heterogeneous data acquisition, Multi-step normalization with schema validation, machine learning with iterative refinement, continuous rule updates, and interactive GUI elements". Examiner notes that this is more of an admission that the claims are merely using these known computing elements to implement the abstract idea of patent management. Nowhere in the specification or disclosure or claim limitations is there an improvement in any of these technologies being applied to implement the patent management.
For Step 2A-Prong 2 and Step 2B starting in p. 37: Regarding to Allegations and Remaining Repeated Allegations of Technological Improvement:
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank lnt'I, 573 U.S. 208,217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
Evaluating additional elements to determine whether they amount to an inventive concept requires
considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. Because this approach considers all claim elements, the Supreme Court has noted that "it is consistent with the general rule that patent claims 'must be considered as a whole."' Alice Corp., 573 U.S. at 218 n.3, 110 USPQ2d at 1981 (quoting Diamond v. Diehr, 450 U.S. 175,188,209 USPQ 1, 8-9 (1981)). Consideration of the elements in combination is particularly important, because even if an additional element does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim. See, e.g., Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016) (process reciting combination of individually well-known freezing and thawing steps was "far from routine and conventional" and thus eligible); BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (inventive concept may be found in the non-conventional and non-generic arrangement of components that are individually well-known and conventional).
Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225,110 USPQ2d at 1984 (see MPEP § 2106.05(d)); and Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappas, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).
Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality:
ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, FairWarning IP, LLC v. latric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016),
iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential);
vii. Providing historical usage information to users while they are inputting data, in order to improve the quality and organization of information added to a database, because "an improvement to the information stored by a database is not equivalent to an improvement in the database's functionality," BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018).
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
Examples that the courts have indicated may not be sufficient to show an improvement to technology include:
i. A commonplace business method being applied on a general-purpose computer, Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015).
The instant application is more similar to the computer systems of Alice, Versata, FairWarning, Credit Acceptance Corp., Lending Tree, and BSH Tech LLC. Thus, for all the reasons stated above, the Examiner respectfully disagrees, and maintains 35 USC § 101 rejection for these pending claims.
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 judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) with no practical application and without significantly more. At Step 1, Claims 1 - 11 falls under statutory category of a process, while claims 12 - 20 are directed to a machine. Hence, the claimed invention is initially directed towards two of the four statutory categories under 35 U.S.C. §101.
Under Step 2A Prong 1, the test is to identify whether the claims are “directed to” a judicial exception. Examiner notes that the claimed invention is directed to an abstract idea in that the instant application is directed to mathematical equations (see MPEP 2106.04(a)(2)(I), certain methods of organizing human activity specifically commercial interactions and behaviors and managing personal behavior and/or interactions between people (see MPEP 2106.04(a)(2)(II)), and mental processes (see MPEP 2106.04(a)(2)(III).
Examiner notes that the claims recite:
Claim 1 (representative of claim 12): A computer-implemented method of automatically docketing patent matters in a patent management system, the method comprising: receiving, by one or more processors operatively coupled to a network, electronic docketing information for a matter from multiple patent data stores via application programming interfaces (APIs); automatically acquiring, by the one or more processors, patent-related data from a plurality of heterogeneous sources, including at least one of patent office websites, PAIR, foreign patent office APIs, and assignment databases; parsing, by the one or more processors, the acquired patent-related data to extract structured information including at least filing date, issue date, title, abstract, and claims; normalizing, by the one or more processors, the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning, and schema validation, to transform the data into a standardized, machine-readable format compatible with a patent management database schema; storing, by the one or more processors, the normalized and validated data in a structured format in a distributed matter database storing encrypted patent prosecution histories; automatically accessing, by the one or more processors from a distributed matter database storing encrypted patent prosecution histories, at least one previously docketed docketing activity data for the matter; automatically identifying, using machine learning analytics executed by the one or more processors across multiple computer systems, at least one next most probable docketing activity, the machine learning analytics comprising: maintaining, in a table, at least one record for each docketing activity, the record including frequency counts of transitions from previously docketed activities to subsequent activities across matters in the patent management system; calculating, for each candidate next docketing activity, a conditional probability based on the frequency with which that activity has historically followed the at least one previously docketed docketing activity for the matter; and updating the frequency counts and conditional probabilities in the table as new docketing activities are processed, such that the probability data for the next most probable docketing activities is iteratively refined over time; automatically retrieving, via the network from external patent office databases, updated docketing activity data for the at least one next most probable docketing activity; creating and storing, in a distributed template database implemented across multiple servers, a customized docketing activity template comprising: jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation rules, and electronic document handling procedures; automatically modifying, by the one or more processors, the at least one next most probable docketing activity by: applying rules of the customized docketing activity template, calculating response due dates based on the jurisdiction-specific patent office deadline calculation rules, wherein the jurisdiction-specific patent office deadline calculation rules are continuously updated, and generating electronic docketing entries; and transmitting, via the network to a client interface device, data for displaying the modified at least one next most probable docketing activity in a graphical user interface, wherein the displayed data includes interactive elements for managing calculated response due dates and automated workflow rules.
Claim 8 (representative of claim 17): A method of determining a probability that a particular activity may be a next docketing activity docketed in a patent management system, the method comprising: storing, by one or more processors operatively coupled to a network, a table in a patent management database implemented across multiple servers, wherein the table includes at least one record for each docketing activity and associated docketing activity template information; and entering and continuously updating, by the one or more processors, docketing activity probability data in fields of the at least one record for each docketing activity by: maintaining frequency counts of transitions from previously docketed activities to subsequent activities across matters in the patent management system in the at least one record for each docketing activity; calculating, for each candidate next docketing activity, a conditional probability based on the frequency with which each candidate next docketing activity has historically followed at least one previously docketed docketing activity for a matter; and updating the frequency counts and conditional probabilities in the table as new docketing activities are processed, such that the probability data for each candidate next docketing activity is iteratively refined over time; automatically retrieving, via application programming interfaces (APIs), updated patent prosecution data from multiple patent office databases; automatically acquiring, by the one or more processors, patent-related data from a plurality of heterogeneous sources, including at least one of patent office websites, PAIR, foreign patent office APIs, and assignment databases; parsing, by the one or more processors, the acquired patent-related data to extract structured information including at least filing date, issue date, title, abstract, and claims; normalizing, by the one or more processors, the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning, and schema validation, to transform the data into a standardized, machine-readable format compatible with a patent management database schema; creating and storing the normalized and validated data in a structured format in the patent management database, customized docketing workflow templates comprising: jurisdiction-specific patent office deadline calculation rules, client-specific workflow automation procedures, and electronic document handling rules; calculating, by the one or more processors, response due dates for docketing activities based on the jurisdiction-specific patent office deadline calculation rules; and transmitting, via the network to a client interface device, data for displaying probable next docketing activities and calculated due dates in an interactive graphical user interface.
At Step 2A, Prong One: The claims 1-20 amount to concepts that are performed mentally and a product of human mental work. The limitations suggest a process similar to standard practice litigation management or any legal practice. This is common practice when attorneys are advising clients prior to trial or prior to any next action. Attorneys have acted with the probable next action in mind long before the invention of computers. Because the limitations above closely follow the steps of receiving docketing information to select a matter for docketing; accessing at least one previously docketed docketing activity data for the matter; and identifying at least one next most probable docketing activity based on the at least one previously docketed docketing activity data for the matter, and the steps involved human judgments, observations and evaluations that can be practically or reasonably performed in the human mind, the claim recites an abstract idea consistent with the “mental process” grouping set forth in the see MPEP 2106.04(a)(2)(III).
Alternatively, Examiner notes that claims 1-20 recites a method of docketing patent matters, the method comprising: receiving docketing information to select a matter for docketing; accessing at least one previously docketed docketing activity data for the matter; and identifying at least one next most probable docketing activity based on the at least one previously docketed docketing activity data for the matters, and is similar to the abstract idea identified in MPEP 2106.04(a)(2)(II) in grouping “II” in that the claims recite certain methods of organizing human activity such as legal or business interactions. This is merely further embellishments of the abstract idea and does not further limit the claimed invention to render the claims patentable subject matter. The limitations, substantially comprising the body of the claim, recite standard processes found in standard practice in litigation practices or legal practices. This is common practice when attorneys are advising their clients regarding potential filings or responses, or potential trial proceedings. Because the limitations above closely follow the steps standard in interactions between people and businesses such as legal interactions, and the steps of the claims involve organizing human activity, the claim recites an abstract idea consistent with the “organizing human activity” grouping set forth in the see MPEP 2106.04(a)(2)(II).
Examiner notes that Applicant alleges that the “machine learning analytics” used for re-training, and deploying the algorithm is found within the claim limitations of “automatically acquiring, by the one or more processors, patent-related data from a plurality of heterogeneous sources, including at least one of patent office websites, PAIR, foreign patent office APIs, and assignment database; parsing, by the one or more processors, the acquired patent-related data to extract structured information including at least filing date, issue date, title, abstract, and claims; normalizing, by the one or more processors, the parsed data by performing at least one of data rearrangement, normalization, filtering to remove duplicates, sorting, binning, and schema validation, to transform the data into a standardized, machine-readable format compatible with a patent management database schema; storing, by the one or more processors, the normalized and validated data in a structured format in a distributed matter database storing encrypted patent prosecution histories” and “the machine learning analytics comprising: maintaining, in a table, at least one record for each docketing activity, the record including frequency counts of transitions from previously docketed activities to subsequent activities across matters in the patent management system; calculating, for each candidate next docketing activity, a conditional probability based on the frequency with which that activity has historically followed the at least one previously docketed docketing activity for the matter; and updating the frequency counts and conditional probabilities in the table as new docketing activities are processed, such that the probability data from the next most probable docketing activities is iteratively refined over time”, under the broadest reasonable interpretation the system requires specific mathematical calculations (using an artificial intelligence (Al) neural network having artificial neurons arranged in layers and connected with each other by connections…training the AI network by changing one or more of the connections between the artificial neurons in the AI neural network based on the feedback that is received… training the AI neural network during one or more additional iterations for machine learning of the AI neural network). “Data conditioning may include data rearrangement, normalization, filtering (e.g., removing duplicates), sorting, binning, or other operations to transform the data into a common format (e.g., using similar date formats and name formats)” (see at least Specification paragraph 33) to perform calculations and therefore encompasses mathematical concepts. “For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record.” MPEP 2106.04, subsection II.B. Under such circumstances, however, the Supreme Court has treated such claims in the same manner as claims reciting a single judicial exception. Id. (discussing Bilski v. Kappos, 561 U.S. 593 (2010)). Here, the claimed invention falls within the mental process/certain method of organizing human activity grouping of abstract ideas, and these steps fall within the mathematical concepts grouping of abstract ideas. The limitations are considered together as a single abstract idea for further analysis.
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation (see MPEP 2106.04(a)(2)(C)). Examples of mathematical calculations recited in a claim include: using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 482, 203 USPQ 812, 813 (CCPA 1979). Examiner notes that the system is using an algorithm to calculated probably next actions using probabilities and frequency counts of stored information.
“Turning to claim 1’s eligibility, we first note that the claim recites a method and, therefore, falls within the process category of § 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we must determine whether the claim (1) recites a judicial exception, and (2) fails to integrate the exception into a practical application. See Guidance, 84 Fed. Reg. at 52-55. If both elements are satisfied, the claim is directed to a judicial exception under the first step of the Alice/Mayo test. See id.” (See at least Patent Board Decision in Appeal 2019005339: page 11)
“The Examiner determines that claim 1 is directed to an abstract idea, namely (1) receiving patent prosecution docket activities, and (2) identifying the likely next step in prosecution. See Final Act. 2-9; Ans. 4-11. To determine whether a claim recites an abstract idea, we (1) identify the claim’s specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely, (a) mathematical concepts; (b) certain methods of organizing human activity; or (c) mental processes.” (See at least Patent Board Decision in Appeal 2019005339: page 12)
“Here, apart from the recited “template database” and “client interface device,” all of claim 1’s recited limitations fit squarely within at least one of the above categories of the USPTO’s guidelines. When read as a whole, the recited limitations are directed to (1) predicting the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identifying discrepancies when the predicted next likely activity is already present in the earlier docket information.” (See at least Patent Board Decision in Appeal 2019005339: page 12-13). Examiner adds that the added language directed to the generically claimed “computing device” and “docketing activity database” are further addressed with the analysis of the “template database” and the “client interface device”.
“That is, apart from the recited “template database” and “client interface device,” the steps reciting (1) receiving (obtaining) docketing information; (2) accessing previously docketed docketing activity data; (3) identifying at least one next most probable docketing activity probability data; (4) creating and storing a customized docketing activity template; (5) automatically modifying the next most probable docketing activity by applying the template to that activity and calculating response due dates; and (6) generate electronic docketing entries, fit squarely in the mental processes and certain methods of organizing human activity categories of the USPTO’s guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental processes including observation, evaluation, and judgment); see also id. (listing exemplary methods of organizing human activity, including legal obligations, personal interactions, and following rules or instructions).” (See at least Patent Board Decision in Appeal 2019005339: page 13). Examiner adds that the added language directed to the generically claimed “computing device” and “docketing activity database” are further addressed with the analysis of the “template database” and the “client interface device” in the analysis.
Also, the identifying, creating, modifying, calculating, generating, and updating steps can be done entirely mentally or with pen and paper by using mere observation and logical reasoning. CF CyberSource, 654 F.3d at 1372. (See at least Patent Board Decision in Appeal 2019005339: page 14).
“Therefore, apart from the recited “template database” and “client interface device,” all of claim 1’s recited limitations are within the mental processes and certain methods of organizing human activity categories of the USPTO’s guidelines and, thus, recite an abstract idea. See Guidance, 84 Fed. Reg. at 52.” (See at least Patent Board Decision in Appeal 2019005339: page 15). Examiner adds that the added language directed to the generically claimed “computing device” and “docketing activity database” are further addressed with the analysis of the “template database” and the “client interface device” in the analysis.
The conclusion that the claim recites an abstract idea within the groupings of the MPEP 2106.04(a)(2) remains grounded in the broadest reasonable interpretation consistent with the description of the invention in the specification. For example, [App. Spec ¶0002], “The patent docketing process may involve (1) storing all key intellectual property information in a centralized and consolidated database; (2) providing access to critical information from documents (e.g., correspondences between law firms and the U.S. PTO, or law firms and clients) and deadlines (e.g., PTO deadlines and non-PTO deadlines); and (3) providing customizable workflows for streaming and automating the patent management processes throughout the patent lifecycle”. Accordingly, the Examiner submits claim 1, recite an abstract idea based on the language identified in claim 1, and the abstract ideas previously identified based on that language that remains consistent with the groupings of Step 2A Prong 1 of the MPEP 2106.04(a)(1). This analysis also applies to the other independent claims that share the same concept claimed.
At Step 2A, Prong Two: If the claims are directed toward the judicial exception of an abstract idea, it must then be determined under Step 2A Prong 2 whether the judicial exception is integrated into a practical application. Examiner notes that considerations under Step 2A Prong 2 comprise most the consideration previously evaluated in the context of Step 2B. The Examiner submits that the considerations discussed previously determined that the claim does not recite “significantly more” at Step 2B would be evaluated the same under Step 2A Prong 1 and result in the determination that the claim does not integrate the abstract idea into a practical application.
The instant application fails to integrate the judicial exception into a practical application because the instant application merely recites words “apply it” (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea. The instant application is directed to a method instructing the reader to implement the identified method of organizing human activity of legal interactions and risk management (i.e., receiving docketing information; accessing at least one previously docketed docketing activity data for the matter; identifying at least one next most probable docketing activity based on the at least one previously docketed docketing activity data for the matter; create a customized docketing activity template to automatically modify the next most probable docketing activity by applying the template to that activity and calculate response due dates; and further generate electronic docketing entries). For instance, there are no additional elements or combination of elements other than the abstract idea itself include the elements such as “receiving docketing information; accessing at least one previously docketed docketing activity data for the matter; identifying at least one next most probable docketing activity based on the at least one previously docketed docketing activity data for the matter to create its corresponding activity template and generate electronic docketing entries”. These elements do not themselves amount to an improvement to the interface or computer, to a technology or another technical field.
Here, the instructions entirely comprise the abstract idea, leaving little if any aspects of the claim for further consideration under Step 2A Prong 2. In short, the role of the generic computing elements recited in claim 1, is the same as the role of the computer in the claims considered by the Supreme Court in Alice, and the claim as whole amounts merely to an instruction to apply the abstract idea. Therefore, the claims have failed to integrate a practical application (2106.04(d)). Under the MPEP 2106.05, this supports the conclusion that the claim is directed to an abstract idea, and the analysis proceeds to Step 2B.
While many considerations in Step 2A need not be reevaluated in Step 2B because the outcome will be the same. Here, on the basis of the additional elements other than the abstract idea, considered individually and in combination as discussed above, the Examiner respectfully submits that the claim 1, does not contain any additional elements that individually or as an ordered combination amount to an inventive concept and the claims are ineligible.
“Notably, the four (now five) elements enumerated above are the only recited elements beyond the abstract idea, but these additional elements, considered individually and in combination, do not integrate the abstract idea into a practical application when reading (the) claim as a whole.” (See at least Patent Board Decision in Appeal 2019005339: page 15). Examiner adds that the added language directed to the generically claimed “computing device” and “docketing activity database” are further addressed with the analysis of the “template database” and the “client interface device” in the analysis.
Even assuming, without deciding, that the claimed invention can (1) predict the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identify discrepancies when the predicted next likely activity is already present in the earlier docket information faster or more efficiently than doing so manually, any speed or efficiency increase comes from the capabilities of the generic computer components—not the recited process itself. See FairWarning IP, LLC v. atric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Services, LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) Like the claims in FairWarning, the focus of claim 1 is not on an improvement in computer processors as tools, but on certain independently abstract ideas that use generic computing components as tools. See FairWarning, 839 F.3d at 1095.” (See at least Patent Board Decision in Appeal 2019005339: page 16).
“But unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely (1) predicts the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identifies discrepancies when the predicted next likely activity is already present in the earlier docket information. This generic computer implementation is not only directed to mental processes and certain methods of organizing human activity, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO).” (See at least Patent Board Decision in Appeal 2019005339: page 17)
In this case here, for the recited “template database” and “client interface device” are merely obvious mechanisms that achieve the recited solution more quickly, namely (1) predicting the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identifying discrepancies when the predicted next likely activity is already present in the earlier docket information faster than by using manual methods. That is, despite the recited components that are used to achieve this end, the focus of the claims nonetheless directed to (1) predicting the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identifying discrepancies when the predicted next likely activity is already present in the earlier docket information, albeit using computer components to achieve that end. Cf. ChargePoint, 920 F.3d at 772—73; see also id. at 772. (See at least Patent Board Decision in Appeal 2019005339: page 19-20).
“Furthermore, the recited “receiving docket information to select a matter for docketing” is insignificant pre-solution activity that merely gathers data and, therefore, does not integrate the exception into a practical application for that additional reason. See Bilski, 545 F.3d at 963; see also CyberSource, 654 F.3d at 1371-72; accord Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).” (See at least Patent Board Decision in Appeal 2019005339: page 20). Examiner adds that the added language directed to the generically claimed “obtaining” is substantially similar to the addressed limitation of “receiving”.
“…the claimed invention does not recite additional elements that (1) improve a computer itself; (2) improve another technology or technical field; (3) implement the abstract idea in conjunction with a particular machine or manufacture that is integral to the claim; (4) transform or reduce a particular article to a different state or thing; or (5) apply or use the abstract idea in some other meaningful way beyond generally linking the abstract idea’s use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See Guidance, 84 Fed. Reg. at 55 (citing MPEP §§ 2106.05(a)— (c), (e)). In short, the claim’s additional elements do not integrate the abstract idea into a practical application when reading claim | as a whole.” (See at least Patent Board Decision in Appeal 2019005339: page 20-21)
“In conclusion, although the recited functions may be beneficial by (1) predicting the next likely activity in a patent matter based on a client’s earlier docket information, and (2) identifying discrepancies when the predicted next likely activity is already present in the earlier docket information, a claim for a useful or beneficial abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379- 80 (Fed. Cir. 2015).” (See at least Patent Board Decision in Appeal 2019005339: page 20-21).
At Step 2B: Examiner notes independent claims 2, 11, and 17 of the instant application contain additional language directed to a computing device and docketing activity database that fall in line with the same analysis as the template database and the client interface device. Merely appending generic computer elements to the abstract idea is not enough to render the claims a practical application of the abstract idea.
“Rather, the claimed “template database” and “client interface device” are additional recited elements whose generic computing functionality is well-understood, routine, and conventional. See Mortgage Grader, 811 F.3d at 1324—25 (noting that components such an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); accord Spec. ¶ 81-98 (describing generic computer components used to implement the invention); Final Act. 9-10; Ans. 4 (determining that the recited generic computer components are additional elements that do not add significantly more than the abstract idea).” (See at least Patent Board Decision in Appeal 2019005339: page 22-23). Examiner notes independent claims 2, 11, and 17 of the instant application contain additional language directed to a computing device and docketing activity database that fall in line with the same analysis as the template database and the client interface device. Merely appending generic computer elements to the abstract idea is not enough to render the claims a practical application of the abstract idea.
“As noted previously, the recited “template database” and “client interface device” are additional recited elements whose generic computing functionality is well-understood, routine, and conventional. Therefore, to the extent that Appellant contends that the Examiner failed to provide evidence that a// recited elements—including those italicized on page 14 of the Appeal Brief that Appellant incorrectly characterizes as “additional elements”—are well-understood, routine, and conventional (see Appeal Br. 10-13; Reply Br. 3-4), such an argument is not commensurate with the more limited scope of the Examiner’s finding in this regard. Rather, the Examiner’s finding is that the elements other than the abstract idea, namely the additional computer-based elements, provide generic computing functionality that is well-understood, routine, and conventional. See Final Act. 9-10; Ans. 8-11 (noting that the recited additional elements are well- known generic computing components and, therefore, do not add significantly more than the abstract idea).” (See at least Patent Board Decision in Appeal 2019005339: page 23-24). Examiner notes independent claims 2, 11, and 17 of the instant application contain additional language directed to a computing device and docketing activity database that fall in line with the same analysis as the template database and the client interface device. Merely appending generic computer elements to the abstract idea is not enough to render the claims a practical application of the abstract idea.
“As noted previously, there is ample evidence of this generic computing functionality in not only the cited case law, but also Appellant’s own Specification. See, e.g., Fair Warning, 839 F.3d at 1096 (noting that using generic computing components like a microprocessor or user interface do not transform an otherwise abstract idea into eligible subject matter); See Internet Patents, 790 F.3d at 1343-49; Mortgage Grader, 811 F.3d at 1324—25 (noting that a database is a generic computer component that does not satisfy the inventive concept requirement); Spec. ¶ 81—98 (describing generic computer components used to implement the invention). Therefore, the additional recited elements, when considered individually and as an ordered combination, do not add significantly more than the abstract idea to render the claim patent-eligible.” (See at least Patent Board Decision in Appeal 2019005339: page 24). Examiner notes independent claims 1, 8, 12, and 17 of the instant application contain additional language directed to a computing device and docketing activity database that fall in line with the same analysis as the template database and the client interface device. Merely appending generic computer elements to the abstract idea is not enough to render the claims a practical application of the abstract idea.
“We reach a similar conclusion regarding the recited insignificant extra-solution activity, namely the recited “receiving docket information to select a matter for docketing.” That docket information is received for selection does not mean that this data gathering function is performed in an unconventional way to add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given this limitation’s high level of generality, the recited extra-solution activity does not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two.” (See at least Patent Board Decision in Appeal 2019005339: page 23-24). Examiner notes independent claims 2, 11, and 17 of the instant application contain additional language directed to a computing device and docketing activity database that fall in line with the same analysis as the template database and the client interface device. Merely appending generic computer elements to the abstract idea is not enough to render the claims a practical application of the abstract idea.
“In conclusion, the additional recited elements—considered individually and as an ordered combination—do not add significantly more than the abstract idea to provide an inventive concept under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.” (See at least Patent Board Decision in Appeal 2019005339: page 25).
With respect to the dependent claims, they have been considered and are not found to be reciting anything that amounts to being significantly more than the abstract idea. Claims 2-7, 9-11, 13-16, and 18-20 are directed to data processing and transmission which the courts have recognized as insignificant extra-solution activities (see at least M.P.E.P. 2106.05 (f))). Claims 2-7, 9-11, 13-16, and 18-20 are further embellishments of the abstract idea of receiving information and analyzing the information for display and do not amount to significantly more.
Therefore, since there are no limitations in the claim that transform the abstract idea into a patent eligible application such that the claim amounts to significantly more than the abstract idea itself, the claims are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. See MPEP 2106.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gross (U.S. Pub No. 20120191757 A1) is pertinent because it “relates to automated electronic system tools and methods for identifying and collecting data that may be access constrained. The invention has particular applicability in extracting and presenting useful data on intellectual property assets and proceedings (such as that found for patent prosecutions).”
Lundberg (U.S. Pub No. 20060212331 A1) is pertinent because it “relates generally to managing information, and more specifically to systems and methods for management of intellectual property information.”
Vanbuskirk (U.S. Patent No. 6308157 B1) is pertinent because it “relates to the field of computer speech recognition and more particularly to an efficient method and system for informing a system user of available voice commands.”
Lundberg – 2 (U.S. Pub No. 20060206345 A1) is pertinent because it “relates generally to managing information, and more specifically to systems and methods for management of intellectual property information.”
Albertelli (U.S. Pub No. 20140019371 A1) is pertinent because it “relates to a system and method for assisting lending institutions mortgage servicers, investors, and law firms with the foreclosure process. More specifically, the present disclosure relates to a system and method for tracking, managing and accelerating specific foreclosure litigation cases through the court system.”
Carothers (U.S. Pub No. 20180285994 A1) is pertinent because it “relate generally to computer applications. More specifically, various embodiments relate to legal analytics systems and methods for discovering meaningful patterns in legal data.”
Lopez (U.S. Pub No. 20110213830 A1) is pertinent because it is “generally related to the field of computers and similar technologies and, in particular, to software utilized in this field. Embodiments are additionally related to SaaS (Software as a Service) and computer networks and cloud computing applications. Embodiments are also related to intellectual property docketing methods and systems, including those that are capable of docketing/tracking patent and trademark matters filed with the U.S. Patent & Trademark Office and other intellectual property agencies, such as, for example, the European Patent Office.”
Lee (U.S. Pub No. 20120323804 A1) is pertinent because it is “directed to computer-related and/or assisted systems, methods and computer readable mediums for analyzing, searching, and accessing information concerning intellectual property. More specifically, it relates to methods and systems for enabling the integration of and/or integration across a variety of intellectual property and/or intellectual property-related systems and/or information.”
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 Ivonnemary Rivera Gonzalez whose telephone number is (571)272-6158. The examiner can normally be reached Mon - Fri 9:00AM - 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Uber can be reached at (571) 270-3923. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IVONNEMARY RIVERA GONZALEZ/Examiner, Art Unit 3626
/FLORIAN M ZEENDER/Supervisory Patent Examiner, Art Unit 3627
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