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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/10/2026 has been entered.
Claim Status
Claims 1-3, 5-12, and 14-20 are currently pending and are presented for examination on the merits.
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 1-3, 5-12, and 14-20 are rejected under 35 U.S.C. § 101, because they recite non-patentable subject matter under MPEP § 2106, e.g., the 2019 PEG, October update. More particularly, the claimed invention is directed to a judicial exception (e.g., an abstract idea, etc.) without practical application or significantly more.
More particularly, when considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Broad categories of abstract ideas include fundamental economic practices, certain methods of organizing human activities, an idea itself, and mathematical relationships/formulas. See, generally, MPEP § 2106; Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. __ (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,132 S. Ct. 1289, 1294, 1297-98 (2012)); Federal Register notice titled 2014 Interim Guidance on Patent Subject Matter Eligibility (79 FR 74618), which is found at: http:// www. gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf; 2015 Update to the Interim Guidance; the 2019 Revised Patent Subject Matter Eligibility Guidance, Fed. Reg., Vol. 84, No. 4, January 7, 2019; and associated Office memoranda.
Under MPEP § 2106, Step 1, the claimed invention, taking the broadest reasonable interpretation, recites a process (i.e., a method), machine (e.g., apparatus, system, etc.), article of manufacture (e.g., a non-transitory computer readable medium) or composition of matter, and as such, is patent eligible.
Under MPEP § 2106, Step 2a-prong 1, Claims 1-3, 5-12, and 14-20 recite a judicial exception(s), including a method of organizing human activity (e.g. fundamental economic principle). More particularly, the entirety of the method steps is directed towards performing specialized due diligence with respect to politically exposed persons, and determining a level of risk associated therewith. This is a long-standing commercial practice previously performed by humans (e.g., campaigns, employers, political parties, etc.) manually and via generic computing. See, Specification, Background. In a well-known example, presidential campaigns have long performed specialized due diligence (e.g., vetting) when selecting a vice-presidential running mate. As such, the inventions include an abstract idea (e.g., a method of organizing human activity) under § 2106, and Alice Corporation.
Under step 2a-prong 2, the claims fail to recite a practical application of the exception, because the extraneous limitations (e.g., the structure—a processor, memory, communication interface, an extraction algorithm, a categorization algorithm, a public information discovery algorithm, an AI-based algorithm, a question answering algorithm, applying categories of predetermined risk, etc.) merely add insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g), generally link the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)) and/or generally instruct an artisan to apply it (the method) across generic computing technology. A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit. See Alice, 573 U.S. at 222; BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014). That is to say, the claims are not directed to a new software or computer, but rather employs pre-existing software to do what’s been previously done, albeit less efficiently or slower. “[I]t is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (citations omitted). More particularly, the claims fail to recite an improvement to the functioning of a computer or technology (under MPEP § 2106.05(a)), the use of a particular machine (under § 2106.05(b)), effect a transformation or reduction of a particular article (§ 2106.05(c)), or apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (§ 2106.05(e)).
Under part 2b, the additional elements offered by the dependent claims either further delineate the abstract idea, add further abstract idea(s), adds insignificant extra-solution activity, or further instruct the artisan to apply it (the abstract idea(s)) across generic computing technology. The claims as a whole, do not amount to significantly more than the abstract idea itself. This is because no one claim effects an improvement to another technology or technical field, an improvement to the functioning of a computer itself, or move beyond a general link of the use of the abstract idea to a particular technological environment. Viewing the limitations as an ordered combination does not add anything further than looking at the limitations individually. Under Alice, merely applying or executing the abstract idea on one or more generic computer system (e.g., a computer system comprising a generic database; a generic element (NIC) for providing website access, etc.; a generic element for receiving user input; and a generic display on the computer, in any of their forms) to carry out the abstract idea more efficiently fails to cure patent ineligibility. See, e.g., Content Extraction, 776 F.3d at 1347 (claims reciting a “scanner” are nevertheless directed to an abstract idea); Mortg. Grader, Inc. v. First Choice Loan Serv. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (claims reciting an “interface,” “network,” and a “database” are nevertheless directed to an abstract idea).
Courts have recognized the following computer functions to be well‐understood, routine, and conventional functions when they are claimed in a merely generic manner: performing repetitive calculations, receiving, processing, and storing data, electronically scanning or extracting data from a physical document, electronic recordkeeping, automating mental tasks, and receiving or transmitting data over a network, e.g., using the Internet to gather data, MPEP 2106.05(d), wherein the italicized tasks are particularly germane to the instant invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5-12, and 14-20 are rejected under 35 U.S.C. § 103 as being unpatentable over US 2005/0044037 to Lawrence et al (“Lawrence I), in view of US 2025/0173682 to Shkel et al., and further in view of US 2002/0103747 to Lawrence (Lawrence II).
With respect to Claims 1, 10, and 19, Lawrence teaches a non-transitory computer readable storage medium storing instructions ([0421]); a computing apparatus for automatically performing specialized due diligence with respect to a person, the computing apparatus comprising: a processor ([0054];[0421]), a memory, and a communication interface coupled to each of the processor and the memory (FIG. 2; [0217]); and a method for automatically performing specialized due diligence with respect to a person (FIGS. 2, 3, 5, 8), the method being implemented by at least one processor (FIG. 1, [0054]), the method comprising: receiving, by the at least one processor, a first data set that includes a name of a first person ([0084]) and a list of positions associated with the first person ([0224], “a person may be associated with multiple titles, occupations”;[0231-32];[0239]); extracting, from the first data set by the at least one processor, first additional information that relates to an association between the first person ([0231];[0232];[0239]; FIG. 2) and the first position from the list of positions; identifying, by the at least one processor for each respective position included in the list of positions, a corresponding category from among a predetermined set of positional categories ([0060];[0222];[0267];FIG. 23); retrieving, by the at least one processor from at least one publicly accessible information source, second additional information that relates to the first person ([0052];[0057];[0060]); analyzing, by the at least one processor, each of the first data set, the first additional information, and the second additional information ([0147]) in order to obtain at least one answer to at least one question from among a predetermined set of questions ([0066], query); and generating, by the at least one processor via the system, a report based on a result of the analyzing and that provides an evaluation of risk associated with the person ([0386];[0388], see reporting engine throughout). Identifying, by the at least one processor via a public information discovery algorithm, at least one publicly accessible information source for obtaining second additional information associated with the first person ([0116], “public websites”), wherein the public information discovery algorithm uses the first additional information extracted by the extraction algorithm to determine the at least one publicly accessible information source ([0067];[0116]); retrieving, by the at least one processor via a public information discovery algorithm, the first additional information extracted by the extraction algorithm and the second additional information ([0067]; [0116]). Lawrence teaches wherein each respective category from the predetermined set of positional categories has a corresponding predetermined level of risk associated therewith ([0060];[0206]);
Lawrence (2005) fails to expressly teach an AI model and the various algorithms for performing the above steps; however, Shkel further teaches an AI model/algorithms (FIG. 1) for extracting, from the first data set by the at least one processor via an extraction algorithm, first additional information that relates to the first person, wherein the extraction algorithm extracts first information from the first data set using a parser, detects a keyword from the first information, and extracts the first additional information using the keyword ([0048];[0103]); for the first position, assigning, by the at least one processor for each respective position included in the list of positions via a categorization algorithm ([0068];[0106]), a corresponding category from among a predetermined set of positional categories, wherein the categorization algorithm inputs the first position and determines the corresponding category for the first position ([0068];[0106]), analyzing, by the at least one processor via an artificial intelligence (AI)-based algorithm ([0067], neural network), each of the first data set, the first additional information, and the second additional information. Shkel teaches consideration of a confidence rating of the question answering algorithm’s output ([0081]; see “performance rating” throughout). Please note that parsing a machine learning model into plural algorithms is obvious to make separate, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179. Lawrence discusses the traditionally “labor-intensive and time-consuming task” of recruitment and hiring in organizations, which are also “resource-intensive [and] prone to human error and biases.” [0003-05] It would have been obvious to one of ordinary skill in the art to modify Lawrence to include the AI model/algorithms and functions recited by the added limitations, in order to reduce labor and time consumption, and reduce resources need and human error.
Lawrence teaches “allow such queries to be performed and responses to be provided based on current and up to date information that has been analyzed for its risk-relevance” but fails to expressly teach generating answers to questions. Lawrence II, however, teaches automatically generating, by the at least one processor via a question answering algorithm, at least one answer to at least one question from among a predetermined set of questions ([0023-25];[0035];[0053]). Lawrence I discusses the traditionally “labor-intensive and time-consuming task” of recruitment and hiring in organizations, which are also “resource-intensive [and] prone to human error and biases.” [0003-05] It would have been obvious to one of ordinary skill in the art to modify Lawrence to include the question and answer algorithm taught by Lawrence II, in order to reduce labor and time consumption, and reduce resources need and human error.
With respect to Claims 2, 11, and 20, Lawrence I and II teach wherein the predetermined set of questions includes a first question that relates to how an association between the first (or particular) person and the first position began (I: [0325], “elected”; II: Abstract; [0023-25], “positions” teaches the start and stop of one position relative to the next), a second question that relates to a start date and an end date for the association between the first person and the first position (I: [0325], “elected”; II: Abstract; [0023-25], “positions” teaches the start and stop of one position relative to the next), a third question that relates to whether the first person remains active with respect to the first position (I: [0325], “elected”; II: Abstract; [0023-25], “positions” teaches the start and stop of one position relative to the next), a fourth question that relates to a country that is associated with both the particular person (I: [0229]; II: [0046-50]) and the particular position, and a fifth question that relates to responsibilities of the particular person with respect to the particular position.
Recitation of an exact set of questions asked of a person during risk assessment is printed matter and are not patentably significant. Applicant is reminded that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 2004 WL 1068957 (Fed. Cir. May 13, 2004)(The federal Circuit held that the claim was anticipated under 102 by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed); see also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)(“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability…[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”).
With respect to Claims 3, and 12, Lawrence teaches wherein for the first question that relates to how an association between a particular person and a particular position began, the at least one answer includes at least one from among an appointment, an election, a birthright, and a hiring. ([0325], “elected”)
With respect to Claims 5, and 14, Lawrence teaches wherein the predetermined set of positional categories includes a first category that relates to national legislative officials ([0231];[0238]), a second category that relates to executives of a state-owned enterprise ([0302];[0311], state), a third category that relates to heads of state ([0233], foreign national), a fourth category that relates to military leaders ([0226]), a fifth category that relates to national cabinet members ([0052];[0069]), a sixth category that relates to sub-national level positions ([0052];[0069]), a seventh category that relates to other politically exposed positions ([0052];[0069]), and an eighth category that relates to positions that are not politically exposed (“financial”).
Recitation of an exact set of sub-positional categories during risk assessment is printed matter and are not patentably significant. Applicant is reminded that where the only difference between a prior art product and a claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 2004 WL 1068957 (Fed. Cir. May 13, 2004)(The federal Circuit held that the claim was anticipated under 102 by a prior art reference that taught a kit that included instructions and a buffer agent, even though the content of the instructions differed); see also In re Gulack, 703 F.2d 1381, 1385-86, 217 USPQ 401, 404 (Fed. Cir. 1983)(“Where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability…[T]he critical question is whether there exists any new and unobvious functional relationship between the printed matter and the substrate.”).
With respect to Claims 6, and 15, Lawrence teaches wherein the at least one publicly accessible information source includes at least one from among a page on a corporate website that is associated with at least one position included in the list of positions and a page on a news outlet website that includes information about the first person. ([0107];[0109];[0401])
With respect to Claims 7, and 16, Lawrence teaches performing a document translation with respect to the second additional information in order to generate an English language version of the second additional information. ([0074];[0092];[0114])
With respect to Claims 8, and 17, Lawrence teaches wherein the analyzing comprises: extracting portions of the first data set, the first additional information, and the second additional information that relate to the at least one question ([0057];[0092], portions); merging the extracted portions into a first merged set of data ([0122], aggregation); providing the first merged set of data and the at least one question as inputs to a large language model ([0157];[0159], natural language processing); and submitting a request to the large language model to generate the at least one answer to the at least one question ([0159]).
With respect to Claims 9, and 18, Lawrence teaches wherein the first data set includes at least one from among data that is provided in a HyperText Markup Language (HTML) format ([0076]), data that is provided in a Portable Document Format (PDF) format, data that is provided in a JavaScript Object Notation (JSON) format, and data that is provided in an Extensible Markup Language (XML) format ([0074]).
Response to remarks
Applicant’s remarks submitted on 02/12/2026 have been fully considered, but are not persuasive where objections/rejections are maintained.
As per § 101, the claims continue to recite inventions including an abstract idea (method of organizing human activity). The amendment adds further limitations that fail to offer an innovative concept in and of themselves. That is to say, humans have long obtained information about a candidate (from public sources), developed questions and answers, categorized positions held by a candidate, with an eye towards certain positions or categories of positions being more risky than others, generated reports evaluating risk, etc. These limitations further delineate the abstract idea and applies it across AI, in detail. Confidence ratings of model outputs are likewise well-known, routine and conventional, at the time of filing. See, prior art references of record, and search notes. Ex parte Desjardins is inapplicable in this case, because improvements to AI modeling is not the subject of this invention; rather AI modeling and algorithms are recited in a general manner. Methods of organizing human activity are not limited to the examples presented in the remarks (e.g., hedging, etc.). Upon traversal, Applicant is asked to specify which one step recites an innovative concept (which step was not previously performed manually and via mental steps), or how the steps in totality recite significantly more than automating the abstract idea of vetting or doing due diligence when selecting a candidate.
As per the prior art rejections, Lawrence II has been added to further teach a question and answer algorithm that determine “risk-related” questions and responses. Shkel teaches an AI model and algorithms that perform extraction using keywords; a categorization algorithm, etc. As such, Applicant’s remarks directed to the prior combination are moot. Please note that the applied reference(s) need not use the same terminology, or disclose the limitation verbatim, and also that the entirety of a prior art reference is to be applied to the respective claim(s), such that the pinpoint citations above are exemplary and provided for Applicant’s benefit; other locations within the applied reference(s) may further support the rejection. MPEP 2141.02(VI).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM J JACOB whose telephone number is (571)270-3082. The examiner can normally be reached on M-F 8:00-5:00, alternating Fri. off.
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/WILLIAM J JACOB/Examiner, Art Unit 3696
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