Prosecution Insights
Last updated: April 18, 2026
Application No. 18/419,312

AI CONTEXTUAL LEGAL MATTER AND COMPUTER-IMPLEMENTED TOOL

Non-Final OA §101
Filed
Jan 22, 2024
Examiner
CAMPBELL, SHANNON S
Art Unit
3628
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Lightning Dep Inc. D/B/A Lightning Law
OA Round
3 (Non-Final)
31%
Grant Probability
At Risk
3-4
OA Rounds
4y 8m
To Grant
40%
With Interview

Examiner Intelligence

Grants only 31% of cases
31%
Career Allow Rate
73 granted / 238 resolved
-21.3% vs TC avg
Moderate +9% lift
Without
With
+9.2%
Interview Lift
resolved cases with interview
Typical timeline
4y 8m
Avg Prosecution
12 currently pending
Career history
250
Total Applications
across all art units

Statute-Specific Performance

§101
23.1%
-16.9% vs TC avg
§103
48.0%
+8.0% vs TC avg
§102
10.1%
-29.9% vs TC avg
§112
14.8%
-25.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 238 resolved cases

Office Action

§101
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 Claims Claims 1, 7-9, and 16 have been amended. No claims have been added or cancelled. Thus, claims 1-20 remain pending and are presented for examination. Response to Arguments Applicant's arguments filed 09 March 2026 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant asserts, “The amended claims are directed to a specific technological improvement in computer functionality—the generation and presentation of machine learning outputs derived from rule-based datasets and triggered by an indication of a privileged virtual meeting.” However, the Examiner contends that the specification and claims as quoted do not sufficiently identify how the claimed generation/presentation materially improves computer technology. Stating a result (ML outputs surfaced at meeting time) does not explain how the system achieves that result in a technical way. Applicant further argues, “This integrated pipeline…addresses known technical problems…including the inability of conventional systems to combine ML driven rule analysis with privileged, meeting specific context… It materially improves the function of the computer system by integrating machine learning rule analysis with meeting context, ensuring that outputs are rule-based, meeting-aware, and responsive to an indication of a privileged attorney- client session.” However, the Examiner disagrees. The Applicant has no provided any specific evidence including specification passages that describe technical problems and explain, with detail, how the claimed Next Applicant argues that the specificity of the claims address technological problems and contribute to technological advancements in a meaningful way . Also, Applicant asserts that the claims recite ab inventive concept. Examiner contends that analyzing data for an identified issue using machine learning trained on legal rules; receiving an indication of a virtual meeting associated with the matter data; and providing machine learning generated outputs tied to those rules and the meeting indication for display during the meeting are high level, information-processing and algorithmic (i.e., mathematical/algorithmic concepts and organizing information), which are judicial exceptions. The recitation that machine learning is “trained on legal rules” describes the subject matter of the model, but not a technical method of training that would convert an abstract model into a technical improvement. Applicant’s arguments with respect to the 103 have been found to be persuasive. In particular, the references cannot be reasonably combined to teach “wherein the machine learning algorithm analyzes the matter data and the rules to generate the particular information in response to the indication of the virtual meeting.” Therefore, the 103 rejection is withdrawn. 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. Claims 1, 9, and 16 recite receiving, from a user, matter data; based on receiving the matter data, identifying an issue; based on identifying the issue, analyzing a set of data, using at least one algorithm, from at least one database that includes rules; receiving an indication of a virtual meeting associated with the matter data, wherein the virtual meeting corresponds to a privileged attorney-client communication between the user and a second user; and based on analyzing the set of data corresponding to the issue and in response to receiving the indication of the virtual meeting associated with the matter data, providing, to a user, analyzing the matter data and the rules to generate the particular information in response to the indication of the meeting, and wherein the particular information comprises generated output from the set of the data analyzed using at least one rule associated with the indication of the virtual meeting corresponding to the matter data and the privileged attorney-client communication (based on representative claim 1). The limitations above are processes that under the broadest reasonable interpretation cover “mental process”--concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and “certain methods of organizing human activity” (including commercial or legal interactions (including agreements in the form of contracts; legal obligations, business relations, and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Specifically, presenting particular information related to a legal matter at a virtual meeting is a legal interaction and/or interactions between people. This judicial exception is not integrated into a practical application. Claim 1 recites the following additional elements “system comprising: one or more processors”(claim 1) “computer memory storing computer-usable instructions that, when executed by the one or more processors, cause the system to perform operations” (claim 1); “a user device”(claims 1 and 16), “virtual” (claims 1, 9, and 16), “a user interface”(claims 1, 9, and 16), “a first user device” (claim 9), “a second user device” (claim 9), “one or more non-transitory computer storage media having computer-executable instructions embodied thereon, that when executed by at least one processor, cause the at least one processor to perform a method” (claim 16). These additional elements are generic computer components performing generic computer functions at a high-level of generality. These additional elements amount to no more than mere instructions to apply the exception using generic computer components. The additional element of “machine learning algorithm” and “machine learning-generated output” (claims 1, 9, and 16) merely serve to provide a general link to a technological environment in which to carry out the judicial exception. Even viewed as an ordered combination, the additional elements are still mere instructions to apply the exception using a generic computer component and a general link to a technological field (machine learning). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented above. The claims as a whole merely describes how to apply the concept of presenting legal matters at a meeting on a general-purpose computer. The mere fact that the meeting is “virtual” also is applying the judicial exception with the use of generic computer components. Moreover, the additional elements are recited at a high-level as evidenced by the spec at 0025-0029, 0093, 0094, and 0096 –describing these elements at a high-level of generality. Thus, even when viewed as a whole, nothing in the claim adds significantly more to the abstract idea. Therefore, the claims are ineligible. Dependent claims 2-8, 10-15, and 17-20 recite additional details that further narrow the previously recited abstract idea but for the additional elements of “a selectable link” (claims 10, 11, 19, and 20), “electronic document” (claims 10, 11, and 20), “an automatic speech recognition model” (claim 15). These elements are performing generic computer functions at a high level, and are recited at a high-level of generality. The “second machine learning algorithm” (claim 3) and “third machine learning algorithm” (claims 6, 12, and 13) merely serve to provide a general link to a technological environment in which to carry out the judicial exception. These additional elements are conventional computing elements as evidenced by the spec at para 0040 and 0043 –describing these elements at a high-level of generality. Thus, even when viewed as a whole, noting in the claim adds significantly more to the abstract idea. Therefore, the claims are ineligible. Claims Free of Prior Art Claims 1-20 are allowable over the prior art of record. However, the claims are still rejected under 35 U.S.C. 101. Davis (US 2025/0061526) discloses receiving matter data that identifies an issue. Using at least one machine learning algorithm, from at least one database that includes rules and based on analyzing the set of data corresponding to the issue associated with the matter data, providing to a user interface, particular information for display, wherein the particular information comprises machine learning generated output from the set of data analyzed using at least one rule corresponding to the matter data (0056; 0078-0082). Bishop (US 2013/0054613) discloses receiving an indication of a virtual meeting associated with the matter data and based on analyzing the set of data and the indication of the virtual meeting associated with the matter data, providing, to a user interface, particular information for display. The documents can be used prior to or during a meeting. Fields (US 2024/0291785) discloses based on analyzing the set of data corresponding to the issue and in response to receiving the indication of the virtual meeting associated with the matter data, providing, to a user interface, particular information for display. Light (US 2010/0037292) discloses a virtual meeting corresponding to a privileged attorney-client communication between users and displaying particular information during a meeting. None of the references when combined reasonably teach “wherein the machine learning algorithm analyzes the matter data and the rules to generate the particular information in response to the indication of the virtual meeting” recited in claim 1, 9, and 16. Claims 2-8, 10-15, and 17-20 are dependent on claims 1, 9, and 16, and are therefore allowable over the prior art for the same reasons. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANNON S CAMPBELL whose telephone number is (571)272-5587. The examiner can normally be reached Monday - Friday 7am-3:30pm. 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. 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. /SHANNON S CAMPBELL/Supervisory Patent Examiner, Art Unit 3628
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Prosecution Timeline

Jan 22, 2024
Application Filed
Jun 14, 2025
Non-Final Rejection — §101
Sep 18, 2025
Response Filed
Oct 08, 2025
Examiner Interview Summary
Oct 08, 2025
Applicant Interview (Telephonic)
Dec 04, 2025
Final Rejection — §101
Mar 09, 2026
Request for Continued Examination
Mar 23, 2026
Response after Non-Final Action
Apr 02, 2026
Non-Final Rejection — §101 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
31%
Grant Probability
40%
With Interview (+9.2%)
4y 8m
Median Time to Grant
High
PTA Risk
Based on 238 resolved cases by this examiner. Grant probability derived from career allow rate.

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