Prosecution Insights
Last updated: April 18, 2026
Application No. 18/447,365

CONDENSING A DOCUMENT FOR ENHANCED ANALYSIS AND PROCESSING

Final Rejection §101
Filed
Aug 10, 2023
Examiner
CASTILLO-TORRES, KEISHA Y
Art Unit
2659
Tech Center
2600 — Communications
Assignee
International Business Machines Corporation
OA Round
2 (Final)
74%
Grant Probability
Favorable
3-4
OA Rounds
3y 0m
To Grant
99%
With Interview

Examiner Intelligence

Grants 74% — above average
74%
Career Allow Rate
80 granted / 108 resolved
+12.1% vs TC avg
Strong +30% interview lift
Without
With
+30.5%
Interview Lift
resolved cases with interview
Typical timeline
3y 0m
Avg Prosecution
32 currently pending
Career history
140
Total Applications
across all art units

Statute-Specific Performance

§101
26.2%
-13.8% vs TC avg
§103
42.9%
+2.9% vs TC avg
§102
15.1%
-24.9% vs TC avg
§112
8.8%
-31.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 108 resolved cases

Office Action

§101
DETAILED ACTION This communication is in response to the Amendments and Arguments filed on 11/10/2025. Claims 2-3, 6-7, 13, 16, and 18 have been canceled by the Applicant. Claims 21-26 have been newly added by the Applicant. Claim(s) 1, 4-5, 8-12, 14-15, 17, 19-26 are pending and have been examined. Hence, this action has been made FINAL. Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Response to Arguments and Amendments Amendments to the claims by the Applicant have been considered and addressed below. With respect to the Claim objections and 35 USC § 101 and 103 rejections, the Applicant provides several arguments in which the Examiner will respond accordingly, below. Claim objection(s) Arguments on page 9 of the Remarks filed on 11/10/2025. Examiner’s Response to Arguments: Applicant’s arguments with respect to the claim objections have been fully considered and are persuasive. The claim objection(s) of claim 3 has been withdrawn. 35 USC § 101 rejection(s) Arguments on pages 10-12 of the Remarks filed on 11/10/2025. Examiner’s Response to Arguments: Arguments have been fully considered but these are not persuasive. The Applicant argues that: Aspects of the present disclosure relate to improvements in document processing. […] Accordingly, the specification provides both the assertion of an improvement and sufficient technicity such that one of ordinary skill in the art would understand the improvement. The pending claims reflect the improvement. […] For example, the independent claims create "a condensed document" and perform "indexing on the condensed document", thereby realizing the technical improvement of "conserving computer resources such as processing cycles, network bandwidth, and/or data storage" ([0018], emphasis added). The Examiner respectfully disagrees with the arguments and still considers the claim being directed to an abstract idea as will be discussed below. Additionally, the Examiner refers the Applicant to MPEP 2106.05(a): “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).” (Emphasis added) Please refer to MPEP 2106.04(1): Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception: Prong One. “Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon? In Prong One examiners evaluate whether the claim recites a judicial exception, i.e. whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. While the terms "set forth" and "described" are thus both equated with "recite", their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diehr, 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981), clearly stated a mathematical equation in the repetitively calculating step, and the claims in Mayo, 566 U.S. 66, 75-77, 101 USPQ2d 1961, 1967-68 (2012), clearly stated laws of nature in the wherein clause, such that the claims "set forth" an identifiable judicial exception. Alternatively, the claims in Alice Corp., 573 U.S. at 218, 110 USPQ2d at 1982, described the concept of intermediated settlement without ever explicitly using the words "intermediated" or "settlement."” “An example of a claim that recites a judicial exception is "A machine comprising elements that operate in accordance with F=ma." This claim sets forth the principle that force equals mass times acceleration (F=ma) and therefore recites a law of nature exception. Because F=ma represents a mathematical formula, the claim could alternatively be considered as reciting an abstract idea. Because this claim recites a judicial exception, it requires further analysis in Prong Two in order to answer the Step 2A inquiry. An example of a claim that merely involves, or is based on, an exception is a claim to "A teeter-totter comprising an elongated member pivotably attached to a base member, having seats and handles attached at opposing sides of the elongated member." This claim is based on the concept of a lever pivoting on a fulcrum, which involves the natural principles of mechanical advantage and the law of the lever. However, this claim does not recite these natural principles and therefore is not directed to a judicial exception (Step 2A: NO). Thus, the claim is eligible at Pathway B without further analysis.” From this analysis, in Step 2A, Prong One, the Examiner has evaluated the independent claims accordingly and determined that the amended independent claims as drafted indeed describe a judicial exception (i.e., an abstract idea), which represent a mental process (which can be performed by a human either mentally or using pen and paper). More specifically, similar to what was discussed in the Non-Final Rejection mailed on 08/12/2025: The independent claim(s) 1, 12, and 17 as drafted cover a human (mental process), the independent claim(s) recite(s): 1. A computer-implemented method for document processing, comprising: defining an ontology for a first document, wherein defining the ontology further comprises creating a document fingerprint for the first document, wherein the document fingerprint is a hash of character and image data within the first document; determining a document type for the first document, based on the ontology associated with the first document, wherein the first document includes a plurality of pages; extracting a plurality of key-value pairs (KVPs) from the first document based on the determined document type, wherein the extracting is performed using a machine learning process that includes a neural network and a natural language processing (NLP) module; identifying an excerpt of the first document that contains a KVP of the plurality of KVPs; and creating a condensed document, wherein the condensed document includes the identified excerpt of the first document, and wherein the condensed document excludes at least one other excerpt of the first document that is not identified as containing a KVP of the plurality of KVPs, and performing indexing on the condensed document. 12. An electronic computation device comprising: a processor; a memory coupled to the processor, the memory containing instructions, that when executed by the processor, cause the electronic computation device to: [the limitations as in claim 1, above.]. 17. A computer program product for an electronic computation device comprising a computer readable storage medium having program instructions embodied therewith, the program instructions executable by a processor to cause the electronic computation device to: [the limitations as in claim 1, above.]. This reads on a human (e.g., mentally and/or using pen and paper): Defining the structure of the document by adding specific labels or indices (e.g., numbering, values, etc.) to the summarized document, wherein the document has specific labels (e.g., image, characters, etc.) Determining a document type based on predetermined set of rules (e.g., structure); Extracting information from said document (e.g., name: value), using predetermined set of rules (e.g., ML and NLP); Identifying a portion of the document containing the information above (e.g., name: value); Creating a summarized version of the document including only desired or predetermined information and bypassing other information Adding indices (e.g., numbering, values, etc.) to the summarized document Please also refer to MPEP 2106.05(f)(2): Whether the claim invokes computers or other machinery merely as a tool to perform an existing process, and MPEP 2106.06(b): Clear Improvement to a Technology or to Computer Functionality. Please refer to MPEP 2106.04(2): Eligibility Step 2A: Whether a Claim is Directed to a Judicial Exception: Prong Two. “Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application? In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B. This concludes the eligibility analysis. If, however, the additional elements do not integrate the exception into a practical application, then the claim is directed to the recited judicial exception (Step 2A: YES), and requires further analysis under Step 2B (where it may still be eligible if it amounts to an ‘‘inventive concept’’). For more information on how to evaluate whether a judicial exception is integrated into a practical application, see MPEP § 2106.04(d)(2).” From this analysis, in Step 2A, Prong Two, the Examiner has evaluated the independent claims accordingly and determined that the amended independent claims as drafted that the claims as a whole do not include additional elements that integrate the exception into a practical application of that exception. (i.e., an abstract idea). As discussed in the Non-Final Rejection mailed on 08/12/2025: This judicial exception is not integrated into a practical application because for example: claim 12 recites “an electronic computation device”, “processor”, “memory” and claim 17 recites also “an electronic computation device” and “a computer program product”. As an example, in [0025] of the as filed specification, it is disclosed: “COMPUTER 101 may take the form of a desktop computer, laptop computer, tablet computer, smart phone, smart watch or other wearable computer, mainframe computer, quantum computer or any other form of computer or mobile device now known or to be developed in the future that is capable of running a program, accessing a network or querying a database, such as remote database 130.”Therefore, a general-purpose computer or computing device is described and mainly used as an application thereof. Accordingly, these additional elements do not integrate the abstract idea into a practical idea because it does not impose any meaningful limits on practicing the abstract idea. Please also refer to MPEP 2106.05(f)(2): Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Finally, please refer to MPEP 2106.05(A): Relevant Considerations For Evaluating Whether Additional Elements Amount To An Inventive Concept “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: i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)); 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));” From this analysis, in Step 2B, the Examiner has evaluated the independent claims accordingly and determined that the independent claims as drafted have limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception. Similar to what was discussed in the Non-Final Rejection mailed on 08/12/2025: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements of using a computer is listed as a general computing device as noted. The claim is not patent eligible. In summary, the Examiner respectfully disagrees with the arguments above. Please refer to analysis above. For more details, please refer to updated 35 U.S.C. § 101 rejections for claims 1, 4-5, 8-12, 14-15, 17, 19-26, below. 35 USC § 103 rejection(s) Arguments on page 12-13 of the Remarks filed on 11/10/2025. Examiner’s Response to Arguments: Applicant’s arguments and amendments with respect to the 35 U.S.C. § 103 rejections have been fully considered and are persuasive. The 35 U.S.C. § 103 rejections of claims 1, 4-5, 8-12, 14-15, 17, 19-26 have been 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, 4-5, 8-12, 14-15, 17, and 19-26 rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. More specifically directed to the abstract idea grouping of: mental process. The independent claim(s) recite(s): 1. A computer-implemented method for document processing, comprising: defining an ontology for a first document, wherein defining the ontology further comprises creating a document fingerprint for the first document, wherein the document fingerprint is a hash of character and image data within the first document; determining a document type for the first document, based on the ontology associated with the first document, wherein the first document includes a plurality of pages; extracting a plurality of key-value pairs (KVPs) from the first document based on the determined document type, wherein the extracting is performed using a machine learning process that includes a neural network and a natural language processing (NLP) module; identifying an excerpt of the first document that contains a KVP of the plurality of KVPs; and creating a condensed document, wherein the condensed document includes the identified excerpt of the first document, and wherein the condensed document excludes at least one other excerpt of the first document that is not identified as containing a KVP of the plurality of KVPs, and performing indexing on the condensed document. 12. An electronic computation device comprising: a processor; a memory coupled to the processor, the memory containing instructions, that when executed by the processor, cause the electronic computation device to: [the limitations as in claim 1, above.]. 17. A computer program product for an electronic computation device comprising a computer readable storage medium having program instructions embodied therewith, the program instructions executable by a processor to cause the electronic computation device to: [the limitations as in claim 1, above.]. This reads on a human (e.g., mentally and/or using pen and paper): Defining the structure of the document by adding specific labels or indices (e.g., numbering, values, etc.) to the summarized document, wherein the document has specific labels (e.g., image, characters, etc.) Determining a document type based on predetermined set of rules (e.g., structure); Extracting information from said document (e.g., name: value), using predetermined set of rules (e.g., ML and NLP); Identifying a portion of the document containing the information above (e.g., name: value); Creating a summarized version of the document including only desired or predetermined information and bypassing other information Adding indices (e.g., numbering, values, etc.) to the summarized document This judicial exception is not integrated into a practical application because for example: claim 12 recites “an electronic computation device”, “processor”, “memory” and claim 17 recites also “an electronic computation device” and “a computer program product”. As an example, in [0025] of the as filed specification, it is disclosed: “COMPUTER 101 may take the form of a desktop computer, laptop computer, tablet computer, smart phone, smart watch or other wearable computer, mainframe computer, quantum computer or any other form of computer or mobile device now known or to be developed in the future that is capable of running a program, accessing a network or querying a database, such as remote database 130.”Therefore, a general-purpose computer or computing device is described and mainly used as an application thereof. Accordingly, these additional elements do not integrate the abstract idea into a practical idea because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements of using a computer is listed as a general computing device as noted. The claim is not patent eligible. With respect to claims 4, 14, and 19, the claim(s) recite: 4. The method of claim 1, wherein defining the ontology further comprises initializing a mandatory flag for each KVP of the plurality of KVPs. 14. The electronic computation device of claim 12, wherein the memory further comprises instructions, that when executed by the processor, cause the electronic computation device to initialize a mandatory flag for each KVP of the plurality of KVPs. 19. The computer program product of claim 17, wherein the computer readable storage medium further comprises program instructions, that when executed by the processor, cause the electronic computation device to initialize a mandatory flag for each KVP of the plurality of KVPs. This reads on a human (e.g., mentally and/or using pen and paper): Defining the structure of the document by predetermining the information to be extracted. No additional limitations are present. With respect to claims 5, 15, and 20, the claim(s) recite: 5. The method of claim 4, further comprising performing validation on each KVP of the plurality of KVPs, based on a setting of the mandatory flag. 15. The electronic computation device of claim 14, wherein the memory further comprises instructions, that when executed by the processor, cause the electronic computation device to perform validation on each KVP of the plurality of KVPs, based on a setting of the mandatory flag. 20. The computer program product of claim 19, wherein the computer readable storage medium further comprises program instructions, that when executed by the processor, cause the electronic computation device to perform validation on each KVP of the plurality of KVPs, based on a setting of the mandatory flag. This reads on a human (e.g., mentally and/or using pen and paper): Validating (e.g., predetermined set of rules like matching) the structure of the document by predetermining the information to be extracted. No additional limitations are present. With respect to claim 8, the claim(s) recite: 8. The method of claim 1, further comprising: identifying a supplemental excerpt of the first document based on the natural language processing, the supplemental excerpt containing metadata associated with the KVP; and including the supplemental excerpt in the condensed document. This reads on a human (e.g., mentally and/or using pen and paper): Identifying an additional portion of the document containing the information above (e.g., name: value); Creating a summarized version of the document including only desired or predetermined information and bypassing other information. No additional limitations are present. With respect to claim 9, the claim(s) recite: 9. The method of claim 1, wherein the extracting is performed using regular expressions. This reads on a human (e.g., mentally and/or using pen and paper): Extracting information using predetermined set of rules (e.g., matching) No additional limitations are present. With respect to claim 10, the claim(s) recite: 10. The method of claim 1, wherein the KVP is one of a plurality of KVPs stored in a JSON file, wherein the excerpt is a page, and wherein page location data associated with the KVP is stored in the JSON file. This reads on a human (e.g., mentally and/or using pen and paper): Reading the information in a predetermined format (e.g., JSON) No additional limitations are present. With respect to claims 11, the claim(s) recite: 11. The method of claim 10, wherein the page location data includes a page number, and Cartesian coordinates of the KVP. This reads on a human (e.g., mentally and/or using pen and paper): Reading the information in a predetermined format (e.g., including multiple pages and coordinates) No additional limitations are present. With respect to claims 21, the claim(s) recite: 21. (New) The method of claim 5, wherein the performing the validation comprises: in response to a first KVP of the plurality of KVPs not appearing in the condensed document: generating an alert indicating that the first KVP does not appear in the condensed document. This reads on a human (e.g., mentally and/or using pen and paper): Searching for portion of the document containing predetermined information (e.g., name: value) and in response to not finding it: Writing down a note/alert about the information not appearing. No additional limitations are present. With respect to claims 22, the claim(s) recite: 22. (New) The method of claim 5, wherein the performing the validation comprises: in response to a first KVP of the plurality of KVPs not appearing in the condensed document: retraining the machine learning process to include the first KVP of the plurality of KVPs in the condensed document. This reads on a human (e.g., mentally and/or using pen and paper): Searching for portion of the document containing predetermined information (e.g., name: value) and in response to not finding it: Redefining the process to include the predetermined information in the document. No additional limitations are present. With respect to claims 23, the claim(s) recite: 23. (New) The method of claim 11, wherein the page location data includes a height of the KVP and a width of the KVP. This reads on a human (e.g., mentally and/or using pen and paper): Reading the information in a predetermined format (e.g., coordinates) No additional limitations are present. With respect to claims 24, the claim(s) recite: 24. (New) The method of claim 1, further comprising: receiving, from a client device, search terms related to the first document, wherein a radio button identifying the condensed document is selected on a user interface of the client device; and executing a search of the search terms on the indexed condensed document based on the radio button identifying the condensed document being selected. This reads on a human (e.g., mentally and/or using pen and paper): Receiving a selection from another human (e.g., perform a keyword/term search on a particular document); Searching (e.g., reading) to find the selected keywords/terms on the document. No additional limitations are present. With respect to claims 25-26, the claim(s) recite: 25. (New) The electronic computation device of claim 12, wherein the KVP is one of a plurality of KVPs stored in a JSON file, wherein the excerpt is a page, wherein page location data associated with the KVP is stored in the JSON file, wherein the page location data includes a page number, Cartesian coordinates of the KVP, a height of the KVP, and a width of the KVP. 26. (New) The computer program product of claim 17, wherein the KVP is one of a plurality of KVPs stored in a JSON file, wherein the excerpt is a page, wherein page location data associated with the KVP is stored in the JSON file, wherein the page location data includes a page number, Cartesian coordinates of the KVP, a height of the KVP, and a width of the KVP. This reads on a human (e.g., mentally and/or using pen and paper): Reading the information in a predetermined format (e.g., including JSON format, multiple pages, coordinates, height, width, etc.). No additional limitations are present. Allowable Subject Matter Claims 1, 4-5, 8-12, 14-15, 17, 19-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the 35 U.S.C. § 101 (abstract idea) rejections set forth in this Office Action and/or if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Regarding independent claims 1, 12, and 17, the closest prior art of record Hariharan et al. (US 20250005007 A1) and further in view of Owens et al. (US 20170052943 A1) teach the limitations as previously mapped in the Non-final Office Action mailed on 08/12/2025 with respect to claim(s) 1, 12, and 17. However, none of the cited prior arts alone or in combination disclose the claim language as amended. Hence, dependent claims 4-5, 8-11, 14-15, and 19-26 would also be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Keisha Y Castillo-Torres whose telephone number is (571)272-3975. The examiner can normally be reached Monday - Friday, 9:00 am - 4:00 pm (EST). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre-Louis Desir can be reached at (571)272-7799. 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. Keisha Y. Castillo-Torres Examiner Art Unit 2659 /Keisha Y. Castillo-Torres/Examiner, Art Unit 2659 /PIERRE LOUIS DESIR/Supervisory Patent Examiner, Art Unit 2659
Read full office action

Prosecution Timeline

Aug 10, 2023
Application Filed
Aug 07, 2025
Non-Final Rejection — §101
Nov 05, 2025
Examiner Interview Summary
Nov 05, 2025
Applicant Interview (Telephonic)
Nov 10, 2025
Response Filed
Jan 28, 2026
Examiner Interview (Telephonic)
Jan 30, 2026
Final Rejection — §101
Mar 25, 2026
Examiner Interview Summary
Mar 25, 2026
Applicant Interview (Telephonic)
Apr 01, 2026
Response after Non-Final Action

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Prosecution Projections

3-4
Expected OA Rounds
74%
Grant Probability
99%
With Interview (+30.5%)
3y 0m
Median Time to Grant
Moderate
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