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 .
The response was received on 4/1/2026. Claims 1, 2, 4, 6-10, 12, and 14-20 are pending where claims 1, 2, 4, 6-10, 12, and 14-20 were previously presented and claims 3, 5, 11, and 13 were cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/1/2026 has been entered.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 4, 6-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With regard to claim 1:
Step 2A, Prong One:
The claim recites the following limitations which are drawn towards an abstract idea:
A method comprising:
detecting,
analyzing,
determining,
wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discrete structural proximity categories, and wherein the set of contextual rules identify legal citation signals and classify a cited with relationship as supportive, contradictory, or a combination thereof based on the legal citation signals (recites mental process steps of evaluating/analyzing information to from a classification/judgement about the relationship between two items/citations),
As seen from above, the identified limitations recite concepts associated with an abstract idea and thus the respective claim recites a judicial exception (see 2106.04(a)) and thus requires further analysis as discussed below.
Step 2A, Prong Two:
The following limitations have been identified as being additional elements as discussed below.
“by the one or more processors” (recites generic hardware elements to merely apply the abstract idea on a computer, see MPEP 2106.05(f))
receiving, by one or more processors, a plurality of documents, each document of the plurality of documents comprising legal citations (recites insignificant extrasolution activity of receiving information over a network/mere data gathering, see MPEP 2106.05(g));
wherein the set of proximity rules associates each pair of legal citations within a particular document to one of a plurality of discrete structural proximity categories consisting of a document proximity, a section proximity, a paragraph proximity, and sentence proximity (recites the particular criteria being used to evaluate a document which amounts to field of use limitations for defining the criteria to be used when making a decision/judgement (see MPEP 2106.05(h)) and adds no meaningful limitations beyond that of the abstract idea as discussed above);
pruning, by the one or more processors, the subset of documents based on the proximity metrics and a set of contextual rules to produce a reduced set of documents (recites insignificant extrasolution activity of filtering/sorting information based on criteria, see MPEP 2106.05(g)),
the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law, or a combination thereof (recites field of use limitations describing the particular classifications of the documents that are desired, see MPEP 2106.05(h));
and generating, by the one or more processors, one or more records in a metadata database (recites insignificant extrasolution activity of electronic recordkeeping, see MPEP 2106.05(g)),
wherein each of the one or more records comprises metadata that identifies at least one document within the reduced set of documents and the legal citations having the cited with relationship within the at least one document, and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof (recites field of use/technological environment limitation that specifies the particular data that is inside the records, see MPEP 2106.05(h)).
As seen from the above discussion, the identified limitations did not integrate the judicial exception into a practical application (see MPEP 2106.04(d)).
Step 2B:
Below is the analysis of the claims:
“by the one or more processors” (recites generic hardware elements to merely apply the abstract idea on a computer, see MPEP 2106.05(f))
receiving, by one or more processors, a plurality of documents, each document of the plurality of documents comprising legal citations (recites well-understood, routine, and conventional activity of receiving information over a network/mere data gathering, see MPEP 2106.05(d));
wherein the set of proximity rules associates each pair of legal citations within a particular document to one of a plurality of discrete structural proximity categories consisting of a document proximity, a section proximity, a paragraph proximity, and sentence proximity (recites the particular criteria being used to evaluate a document which amounts to field of use limitations for defining the criteria to be used when making a decision/judgement (see MPEP 2106.05(h)) and adds no meaningful limitations beyond that of the abstract idea as discussed above);
pruning, by the one or more processors, the subset of documents based on the proximity metrics and a set of contextual rules to produce a reduced set of documents (recites well-understood, routine, and conventional activity of filtering/sorting information based on criteria, see MPEP 2106.05(d)),
the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law, or a combination thereof (recites field of use limitations describing the particular classifications of the documents that are desired, see MPEP 2106.05(h));
and generating, by the one or more processors, one or more records in a metadata database (recites well-understood, routine, and conventional activity of electronic recordkeeping, see MPEP 2106.05(d)),
wherein each of the one or more records comprises metadata that identifies at least one document within the reduced set of documents and the legal citations having the cited with relationship within the at least one document, and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof (recites field of use/technological environment limitation that specifies the particular data that is inside the records, see MPEP 2106.05(h)).
As seen from above, the respective claim elements taken individually do not amount to significantly more than the judicial exception. When taken as a whole (in combination), the claim also does not amount to significantly more than the abstract idea because the additional elements relate to receiving data/documents to be used by the computer system as well as performing some pruning/filtering operations based on particular criteria and storing records about the associations between documents.
With regard to claim 2, this claim recites wherein the plurality of documents comprises case law documents, and wherein the cited with relationship indicates that a particular document cites to a first legal citation and a second legal citation which recites the types of documents being used which amounts to field of use limitations (see MPEP 2106.05(h)) and adds no meaningful limitations beyond that of the abstract idea as discussed above.
With regard to claim 4, this claim recites wherein the set of contextual rules is configured to: identify markers corresponding to the legal citations within each document of the subset of documents; determine a structure for each document of the subset of documents (recites mental process step of evaluation and judgement of textual patterns in a document),
wherein the structure identifies an organization of structural elements within each document of the subset of documents, wherein the structural elements include sections, paragraphs, sentences, or a combination thereof; or a combination thereof (recites field of use limitation describing the format/layout of a document, see MPEP 2106.05(h)).
With regard to claim 6, this claim recites wherein the set of contextual rules is configured to associate the legal citations and the proximity metric with one or more structural elements of the structure for each document of the subset of documents which recites insignificant extrasolution activity of recording information which amounts to well-understood, routine, and conventional activity of electronic recordkeeping (see MPEP 2106.05(d)) and adds no meaningful limitation beyond that of the abstract idea.
With regard to claim 7, this claim recites wherein the pruning further comprises applying contextual rules to each document within the subset of documents having a set of legal citations associated with proximity metrics satisfying a threshold proximity metric which recites insignificant extrasolution activity of doing multiple filtering/sorting steps which amounts to well-understood, routine, and conventional activity of sorting information (see MPEP 2106.05(d)).
With regard to claim 8, this claim recites wherein the generating is performed daily which recites field of use limitations describing when the computer system is creating records (see MPEP 2106.05(h)) and adds no meaningful limitation beyond that of the abstract idea.
With regard to claim 9, upon further consideration and review of the applicant’s specification and drawings, such as Figures 4A and 4B, the respective limitations when viewed as an ordered combination amounts to significantly more than the abstract idea including the particular means of displaying search results and doing a second search during the initial display of a document for cited with documents.
With regard to claim 10, this claim recites similar limitations to claim 9 in a manner that, for similar reasons as discussed above with regard to claim 9, the ordered combination when viewed as a whole amount to significantly more than the abstract idea. The respective dependent claims of claim 10 are drawn to patent eligible subject matter for similar reasons as their respective parent claim.
With regard to claim 17, this claim recites similar limitations to claim 9 in a manner that, for similar reasons as discussed above with regard to claim 9, the ordered combination when viewed as a whole amount to significantly more than the abstract idea. The respective dependent claims of claim 17 are drawn to patent eligible subject matter for similar reasons as their respective parent claim.
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.
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, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Gipp et al [US 2011/0264672] in view of Pitkow et al [US 6,457,028], Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1].
With regard to claim 1, Gipp teaches a method comprising: receiving, by one or more processors, a plurality of documents, each document of the plurality of documents comprising
analyzing, by the one or more processors, each of the plurality of documents to detect a subset of documents in the plurality of documents, the subset of documents detected based on the
wherein the set of proximity rules associates each pair of
Gipp does not appear to explicitly teach:
each document of the plurality of documents comprising legal citations;
pruning, by the one or more processors, the subset of documents based on the proximity metrics and a set of contextual rules to produce a reduced set of documents, wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discrete structural proximity categories, and wherein the set of contextual rules identify legal citation signals and classify a cited with relationship as supportive, comparative, contradictory, or a combination thereof based on the legal citation signals, the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law or a combination thereof;
and generating, by the one or more processors, one or more records in a metadata database, wherein each of the one or more records comprises metadata that identifies at least one document within the reduced set of documents and the legal citations having the cited with relationship within the at least one document, and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof.
Pitkow teaches pruning, by the one or more processors, the subset of documents
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the citation analysis process of Gipp by providing means to reduce the total number of documents that must be considered and processed/analyzed as taught by Pitkow in order to improve the response time of the system when analyzing citations such that the system is not wasting processing time, power, and other resources to consider completely unrelated citation pairs which in turn improves “computational efficiency” (see Pitkow, col 7, line 67 – col 8, line 1).
Gipp in view of Pitkow teach pruning, by the one or more processors, the subset of documents based on the proximity metrics and a set of contextual rules to produce a reduced set of documents, wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discrete structural proximity categories (see Pitkow, Figure 2 and col 7, line 48 through col 8, line 6; see Gipp, paragraphs [0056]-[0058], [0077], and [0097]-[0103]; the system can analyze documents to determine similar documents based on the citations and respective proximity metric/score that is based on a set of distance/proximity rules and can discard/prune documents deemed not similar enough, i.e. unrelated; the citations can be in close proximity because they are supportive or have the same point or even have a contradictory point);
generating, by the one or more processors, one or more records in a metadata database, wherein each of the one or more records comprises metadata that identifies at least one document within the reduced set of documents and the
Gipp in view of Pitkow do not appear to explicitly teach:
each document of the plurality of documents comprising legal citations;
wherein the set of contextual rules identify legal citation signals and classify a cited with relationship as supportive, comparative, contradictory, or a combination thereof based on the legal citation signals, the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law or a combination thereof;
wherein each of the one or more records comprises … and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof.
Cucerzan teaches each document of the plurality of documents comprising legal citations (see paragraph [0027]; the corpus of documents can relate to law review documents).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Gipp in view of Pitkow by providing means to store and analyze law review documents with legal citations as taught by Cucerzan in order to expand the availability of the system to other industries/fields that rely on and utilize citations frequently thereby providing the benefits of analyzing and finding co-citations to the legal field.
Gipp in view of Pitkow and Cucerzan teach wherein the set of contextual rules identify legal citation signals (see Gipp, paragraph [0077]; Cucerzan, paragraphs [0026]-[0027]; the signals can relate to legal citations in law review documents and be able to identify at least supporting and contradictory references/citations).
Gipp in view of Pitkow and Cucerzan do not appear to explicitly teach:
wherein the set of contextual rules … classify a cited with relationship as supportive, comparative, contradictory, or a combination thereof based on the legal citation signals, the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law or a combination thereof;
wherein each of the one or more records comprises … and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof.
Srikrishna teaches classify a cited with relationship as supportive, comparative, contradictory, or a combination thereof based on the legal citation signals (see paragraphs [0058] and [0029]; the system can determine relationship between files and that relationship can be saved/associated with the file).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Gipp in view of Pitkow and Cucerzan by providing means to identify relationships between documents as taught by Srikrishna in order to provide greater context to citations so that the system can provide users with additional information about the relationship between documents thus saving the user time and effort and be able to selectively choose which documents to read instead of having to read all the related/similar documents to try to see which ones are supporting a particular position/topic and which ones don’t.
Gipp in view of Pitkow, Cucerzan, and Srikrishna teach wherein the set of contextual rules … classify a cited with relationship as supportive, comparative, contradictory, or a combination thereof based on the legal citation signals, the reduced set of documents corresponding to a portion of the subset of documents in which the legal citations have the cited with relationship indicating that the legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law or a combination thereof; wherein each of the one or more records comprises … and a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof (see Gipp, paragraph [0077]; Cucerzan, paragraphs [0026]-[0027]; [0015], and [0046]; see Pitkow, col 7, line 67 – col 8, line 1; see Srikrishna, paragraphs [0058] and [0029]; the system can utilize an attribute/tag/field to classify the relationship as contradictory, supportive/complements, or summarizes/comparative).
With regard to claim 4, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach wherein the set of contextual rules is configured to: identify markers corresponding to the legal citations within each document of the subset of documents; determine a structure for each document of the subset of documents, wherein the structure identifies an organization of structural elements within each document of the subset of documents, wherein the structural elements include sections, paragraphs, sentences, or a combination thereof; or a combination thereof (see Gipp, paragraphs [0062]-[0071]; the system can analyze and be able to determine the structure of the document to assist in determining the distance between two citations including based on sections/chapters; paragraphs, or sentences).
With regard to claim 6, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach wherein the set of contextual rules is configured to associate the legal citations and the proximity metric with one or more structural elements of the structure for each document of the subset of documents (see Gipp, paragraphs [0074] and [0099]-[0100]; the system is able to associated legal citations with proximity metrics and structural elements when determining a score/value for the citation pair).
With regard to claim 7, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach wherein the pruning further comprises applying contextual rules to each document within the subset of documents having a set of legal citations associated with proximity metrics satisfying a threshold proximity metric (see Gipp, paragraph [0100]; see Pitkow, col 7, line 62 through col 8, line 3; the system can utilize the similarity scores to prune citations that are deemed unrelated since they don’t satisfy a proximity threshold of relatedness).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Gipp et al [US 2011/0264672] in view of Pitkow et al [US 6,457,028 Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1] in further view of Pendyala [US 2022/0215017 A1].
With regard to claim 2, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach all the claim limitations of claim 1 as discussed above.
Gipp in view of Pitkow, Cucerzan, and Srikrishna wherein the cited with relationship indicates that a particular document cites to a first legal citation and a second legal citation (see Gipp, Figure 2; a particular document can cite multiple documents).
Gipp in view of Pitkow, Cucerzan, and Srikrishna do not appear to explicitly teach wherein the plurality of documents comprises case law documents.
Pendyala teaches wherein the plurality of documents comprises case law documents (see paragraph [0021]; case law corpus or documents can be analyzed).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document types that are used by the citation system of Gipp in view of Pitkow, Cucerzan, and Srikrishna by being able to use case law documents as taught by Pendyala in order to expand the availability of the system to other document types that rely on and utilize citations frequently thereby providing the benefits of analyzing and finding co-citations for those documents and aiding users of the legal field to find related and similar documents.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Gipp et al [US 2011/0264672] in view of Pitkow et al [US 6,457,028], Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1] in further view of Kim et al [US 6,754,654].
With regard to claim 8, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach all the claim limitations of claim 1 as discussed above.
Gipp in view of Pitkow, Cucerzan, and Srikrishna do not appear to explicitly teach wherein the generating is performed daily.
Kim teaches wherein the generating is performed daily (see col 6, line 63 through col 7, line 34; the system can perform daily updates of the databases to account for new documents being created).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Gipp in view of Pitkow, Cucerzan, and Srikrishna by providing means update the document and citation information on a periodically as taught by Kim in order to extend the duration and usability of the system by not having it be a static knowledge repository but rather be able to be updated with new information thus allowing the system to stay relevant for users over time.
Claims 9 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Gipp et al [US 2011/0264672] in view of Pitkow et al [US 6,457,028], Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1] in further view of Vanderwende et al [US 2012/0233152 A1].
With regard to claim 9, Gipp in view of Pitkow, Cucerzan, and Srikrishna teach all the claim limitations of claim 1 as discussed above.
Gipp in view of Pitkow, Cucerzan, and Srikrishna do not appear to explicitly teach receiving, by the one or more processors, search parameters via inputs to a graphical user interface (GUI);
executing, by the one or more processors, a first search of a document database based on the search parameters to identify a set of search results, each search result of the set of search results corresponding to a particular document of a second plurality of documents associated with the document database;
outputting, by the one or more processors, the set of search results to the GUI, wherein the GUI comprises one or more selectable elements for viewing the documents corresponding to the set of search results;
receiving, by the one or more processors, a first input corresponding to selection of a selected element of the one or more selectable elements, the selected element corresponding to a particular search result of the set of search results;
displaying, based on the first input, a document corresponding to the particular search result;
initiating, by the one or more processors, a second search based on a second input received during display of the document corresponding to the particular search result, wherein the second search comprises:
querying the metadata database to identify additional search results, the additional search results corresponding to other documents of the second plurality of documents associated with the document database that identify a cited with relationship with respect to the document corresponding to the particular search result and an additional document of the second plurality of documents;
and outputting, by the one or more processors, the additional search results to the GUI.
Vanderwende teaches receiving, by the one or more processors, search parameters via inputs to a graphical user interface (GUI) (see paragraphs [0008] and [0024]; the system can receive a query with parameters as input by a user);
executing, by the one or more processors, a first search of a document database based on the search parameters to identify a set of search results, each search result of the set of search results corresponding to a particular document of a second plurality of documents associated with the document database (see paragraph [0025]; the system can perform a search based on the search parameters to find multiple search results);
outputting, by the one or more processors, the set of search results to the GUI, wherein the GUI comprises one or more selectable elements for viewing the documents corresponding to the set of search results (see paragraphs [0027]-[0030] and [0037]; the system can display the output to the user where the output is interactive and responsive to user input);
receiving, by the one or more processors, a first input corresponding to selection of a selected element of the one or more selectable elements, the selected element corresponding to a particular search result of the set of search results; displaying, based on the first input, a document corresponding to the particular search result (see paragraphs [0038] and [0040]; the system allows users to interact and select results that can cause a selected document to be displayed);
initiating, by the one or more processors, a second search based on a second input received during display of the document corresponding to the particular search result (see paragraphs [0011] and [0040]; the user can select a document to view where, once selected, another search is performed to find other related documents),
wherein the second search comprises: querying the metadata database to identify additional search results, the additional search results corresponding to other documents of the second plurality of documents associated with the document database that identify a cited with relationship with respect to the document corresponding to the particular search result and an additional document of the second plurality of documents; and outputting, by the one or more processors, the additional search results to the GUI (see paragraphs [0011], [0026]-[0027], [0040], and [0048]; the system can perform searches based on user selection of a particular document to find other documents that are cited with (co-cited) the selected document).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Gipp in view of Pitkow, Cucerzan, and Srikrishna by providing input search means for a user to be able to search for documents and receive additional information about co-citations as taught by Vanderwende in order to provide alternative means for a user to find information including being able to perform a generalized search and browse through results instead of having to provide the exact document they want to have analyzed thus improving and expanding the usability and versatility of the system to be more user friendly and useful to users that are researching information in general.
With regard to claim 17, this claim is substantially similar to claim 9 and is rejected for similar reasons as discussed above.
With regard to claim 18, Gipp in view of Pitkow, Cucerzan, Srikrishna, and Vanderwende teach wherein the set of proximity rules classifies the legal citations within the given document relative to one another as having at least one of a document proximity, a section proximity, a paragraph proximity, or a sentence proximity (see Gipp, paragraphs [0061-[0073]; the system can classify the proximity and apply particular rules based on the classification to determine a similarity value).
With regard to claim 19, Gipp in view of Pitkow, Cucerzan, Srikrishna, and Vanderwende teach wherein the set of contextual rules are configured to: identify markers corresponding to the legal citations within each document of the plurality of documents; determine a structure for each document of the plurality of documents, wherein the structure identifies an organization of structural elements within each document, wherein the structural elements include sections, paragraphs, sentences, or a combination thereof; or a combination thereof (see Gipp, paragraphs [0062]-[0071]; the system can analyze and be able to determine the structure of the document to assist in determining the distance between two citations including based on sections/chapters; paragraphs, or sentences).
Claims 10, 12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Vanderwende et al [US 2012/0233152 A1] in view of Gipp et al [US 2011/0264672 A1], Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1].
With regard to claim 10, Vanderwende teaches a method comprising: receiving, by one or more processors (see paragraph [0046] for discussion of computer hardware), search parameters via inputs to a graphical user interface (GUI) (see paragraphs [0008] and [0024]; the system can receive a query with parameters as input by a user);
executing, by the one or more processors, a search of a document database based on the search parameters to identify a set of search results, each search result of the set of search results corresponding to a particular document of a plurality of documents associated with the document database (see paragraph [0025]; the system can perform a search based on the search parameters to find multiple search results);
outputting, by the one or more processors, the set of search results to the GUI, wherein the GUI comprises one or more selectable elements for viewing the documents corresponding to set of search results (see paragraphs [0027]-[0030] and [0037]; the system can display the output to the user where the output is interactive and responsive to user input);
receiving, by the one or more processors, a first input corresponding to selection of a first selected element of the one or more selectable elements, the first selected element corresponding to a particular search result of the set of search results; displaying, based on the first input, a document corresponding to the particular search result (see paragraphs [0038] and [0040]; the system allows users to interact and select results that can cause a selected document to be displayed).
initiating, by the one or more processors, a second search based on a second input received during display of the document corresponding to the particular search result (see paragraphs [0011] and [0040]; the user can select a document to view where, once selected, another search is performed to find other related documents),
wherein the second search comprises: querying a metadata database to identify additional search results, the additional search results corresponding to other documents of the plurality of documents that identify a cited with relationship… and outputting, by the one or more processors, the additional search results to the GUI (see paragraphs [0011], [0026]-[0027], [0040], and [0048]; the system can perform searches based on user selection of a particular document to find other documents that are cited with (co-cited) the selected document).
Vanderwende does not appear to explicitly teach:
…indicating that legal citations are cited together for a same point of law, a comparative point of law, a contradictory point of law or a combination thereof,
wherein the metadata database comprises records including a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof;
and wherein the cited with relationship is determined for each document of the plurality of documents by:
detecting, by the one or more processors, legal citations within a given document of the plurality of documents;
determining, by the one or more processors, a proximity metric for the given document based on a set of proximity rules, the proximity metric associated with the legal citations within the given document, wherein the set of proximity rules associates each pair of legal citations within a particular document to one of a plurality of discrete structural proximity categories consisting of document proximity, section proximity, paragraph proximity, and sentence proximity;
and evaluating, by the one or more processors, the given document based on the proximity metric and a set of contextual rules, wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discreate structural proximity categories.
Gipp teaches indicating that
determining, by the one or more processors, a proximity metric for the given document based on a set of proximity rules (see paragraphs [0056]-[0058] and [0097]-[0103]; the system can analyze documents to determine similar documents based on the citations and respective proximity metric/score that is based on a set of distance/proximity rules).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the citation analysis process of Vanderwende by being able to determine highly similar citations even when making different arguments as taught by Gipp in order to still find relevant and highly related documents via co-citations (see Vanderwende, paragraph [0004]) while not treating each co-citation equally since and being able to make a distinction for citations that are supportive of each other versus contradictory of each other thereby helping the system determine and score related citations by not only considering structural location (i.e. same paragraph or sentence) but also whether the citation/document is supportive or contradictory too.
Vanderwende in view of Gipp teach wherein the set of proximity rules associates each pair of
Vanderwende in view of Gipp do not appear to explicitly teach:
legal citations;
wherein the metadata database comprises records including a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof;
and wherein the cited with relationship is determined for each document of the plurality of documents by:
detecting, by the one or more processors, legal citations within a given document of the plurality of documents;
and evaluating, by the one or more processors, the given document based on the proximity metric and a set of contextual rules, wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discreate structural proximity categories.
Cucerzan teaches legal citations (see paragraph [0027]; the corpus of documents can relate to law review documents).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the citation system of Vanderwende in view of Gipp by providing means to analyze law review documents with legal citations as taught by Cucerzan in order to expand the availability of the system to other industries/fields that rely on and utilize citations frequently thereby providing the benefits of analyzing and finding co-citations to the legal field.
Vanderwende in view of Gipp and Cucerzan teach wherein the cited with relationship is determined for each document of the plurality of documents by: detecting, by the one or more processors, legal citations within a given document of the plurality of documents (see Gipp, Figure 3, S1; paragraph [0102]; see Cucerzan, paragraph [0027]; citations within a document are identified);
evaluating, by the one or more processors, the given document based on the proximity metric and a set of contextual rules, wherein the set of contextual rules are applied to documents having legal citations associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discreate structural proximity categories (see Gipp, paragraphs [0021], [0074], [0103], and [0104]; see Cucerzan, paragraphs [0015], and [0046], and [0027]; the system can determine a metric based on proximity rules and utilize contextual rules about the structure of the document and the locations of the respective citations to determine how similar or relevant the citation pair is to each other).
Vanderwende in view of Gipp and Cucerzan do not appear to explicitly teach: wherein the metadata database comprises records including a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof.
Srikrishna teaches a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof (see paragraphs [0058] and [0029]; the system can determine relationship between files and that relationship can be saved/associated with the file).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the citation system of Vanderwende in view of Gipp and Cucerzan by providing means to identify relationships between documents as taught by Srikrishna in order to provide greater context to citations so that the system can provide users with additional information as well as perform searches about the relationship between documents thus saving the user time and effort and be able to selectively choose which documents to read instead of having to read all the related/similar documents to try to see which ones are supporting a particular position/topic and which ones don’t.
Vanderwende in view of Gipp, Cucerzan, and Srikrishna teach wherein the metadata database comprises records including a classification of the cited with relationship as supportive, comparative, contradictory, or a combination thereof (Gipp, paragraph [0077]; Cucerzan, paragraphs [0026]-[0027]; see Srikrishna, paragraphs [0058] and [0029]; the system can utilize an attribute/tag/field to classify the relationship as contradictory, supportive/complements, or summarizes/comparative).
With regard to claim 12, Vanderwende in view of Gipp, Cucerzan, and Srikrishna teach wherein the set of contextual rules are configured to: identify markers corresponding to the legal citations within each document of the plurality of documents; determine a structure for each document of the plurality of documents, wherein the structure identifies an organization of structural elements within each document, wherein the structural elements include sections, paragraphs, sentences, or a combination thereof; or a combination thereof (see Gipp, paragraphs [0062]-[0071]; the system can analyze and be able to determine the structure of the document to assist in determining the distance between two citations including based on sections/chapters; paragraphs, or sentences).
With regard to claim 14, Vanderwende in view of Gipp, Cucerzan, and Srikrishna teach generating, for a given additional search result of the additional search results, a summary of a portion of the document corresponding to the additional search result, the portion comprising a first legal citation corresponding to the particular search result and a second legal citation corresponding to the additional document, the first and second legal citations having a cited with relationship with respect to one another; and outputting the summary to the GUI (see Vanderwende, paragraphs [0037] and [0044]; Cucerzan, paragraph [0027]; the system can include means to generate a summary of portion of the document related to the citations and provide the summary to the user on the user interface).
With regard to claim 16, Vanderwende in view of Gipp, Cucerzan, and Srikrishna teaches receiving, by the one or more processors, a third input corresponding to selection of a third selected element of the one or more selectable elements, the third selectable element corresponding to a subset of the additional search results corresponding to documents of the plurality of documents having a particular cited with relationship with the document corresponding to the particular search result (see Vanderwende, paragraphs [0011], [0037], and [0040]; the user can interact with the user interface to select various documents/nodes to receive information about those documents).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Vanderwende et al [US 2012/0233152 A1] in view of Gipp et al [US 2011/0264672 A1], Cucerzan et al [US 2013/0268519 A1], and Srikrishna et al [US 2013/0262537 A1] in further view of Kim et al [US 6,754,654].
With regard to claim 15, Vanderwende in view of Gipp, Cucerzan, and Srikrishna teach all the claim limitations of claim 10 as discussed above.
Vanderwende in view of Gipp, Cucerzan, and Srikrishna do not appear to explicitly teach wherein the document database and the metadata database are updated daily.
Kim teaches wherein the document database and the metadata database are updated daily (see col 6, line 63 through col 7, line 34; the system can perform daily updates of the databases to account for new documents being created).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Vanderwende in view of Gipp, Cucerzan, and Srikrishna by providing means update the document and citation information on a periodically as taught by Kim in order to extend the duration and usability of the system by not having it be a static knowledge repository but rather be able to be updated with new information thus allowing the system to stay relevant for users over time.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Gipp et al [US 2011/0264672] in view of Pitkow et al [US 6,457,028], Cucerzan et al [US 2013/0268519 A1], Srikrishna et al [US 2013/0262537 A1], and Vanderwende et al [US 2012/0233152 A1] in further view of Kim et al [US 6,754,654].
With regard to claim 20, Gipp in view of Pitkow, Cucerzan, Srikrishna, and Vanderwende teach all the claim limitations of claim 17 as discussed above.
Gipp in view of Pitkow, Cucerzan, Srikrishna, and Vanderwende do not appear to explicitly teach wherein the document database and the metadata database are updated daily.
Kim teaches wherein the document database and the metadata database are updated daily (see col 6, line 63 through col 7, line 34; the system can perform daily updates of the databases to account for new documents being created).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the document storage and citation system of Gipp in view of Pitkow, Cucerzan, Srikrishna, and Vanderwende by providing means update the document and citation information on a periodically as taught by Kim in order to extend the duration and usability of the system by not having it be a static knowledge repository but rather be able to be updated with new information thus allowing the system to stay relevant for users over time.
Response to Arguments
Applicant's arguments (see the second paragraph on page 11 through the last paragraph on page 15) have been fully considered but they are not persuasive. The applicant argues that the claims integrate the abstract idea into a practical application by improving the functionality of a computer. The Examiner respectfully disagrees.
In particular, the applicant argues the specification and claims solve the technical problems through specific technical means including the usage of contextual rules that “identify markers corresponding to the legal citations” and “classify the cited with relationship as supportive, comparative, or contradictory based on the markers” (see first paragraph on page 12). However, it is unclear how identifying content improves the functioning of the computer. Although applicant claims relate to legal citations, the mention of legal citations doesn’t appear to differentiate from other citation relationships in general including scientific or medical citations including relationships between citations. As illustrated in the 35 USC 101 rejections, the claim limitations relate to the identifying citations as well as the evaluation/classification of the relationship between citations which relate to the judicial exception/abstract idea with a focus on a particular field of use (i.e. legal). The judicial exception alone cannot provide the improvement. Therefore, applicant’s argument is not persuasive.
The applicant further argues (see second paragraph on page 12) that the operations form a multiple stage computational pipeline that enables the computer to perform tasks that are “impractical or impossible for humans to carry out manually, particularly across large set of legal documents”. Although applicant’s process may be utilized in large sets of documents; the claimed process is not limited to such size where mere automation of manual processes, such as using a generic computer, may not be sufficient to show an improvement in computer functionality. As noted in the 35 USC 101 rejections above, the claims are directed towards determining the similarity/relationship between citations in documents based on proximity (or where the citations occur relative to one another). As such, applicant’s assertion that the process of doing research work on documents that have citations to each other is “impractical or impossible for humans to carry out manually” is not persuasive.
The applicant argues (start at last paragraph on page 12 through the last paragraph on page 13) that the improvements are analogous to the distributed network filtering and functionality and improved server structure example discussed in the MPEP since the claimed classification provides structured data that improves database searchability and reduces computational resources required for subsequent searches similar to how improved data structures and indexing improve database performance. The Examiner notes that there are differences between the facts of distributed network filtering case and it’s unclear how the present claims relate to distributed network filtering, thus merely indicating that they are similar is not persuasive. Additionally, applicant indicates that the claimed process enables “researchers to more quickly identify relationships between legal documents” which appears to amount to merely using the computer as a tool to perform the abstract idea and the recitation of computer elements (i.e. processor) appear to function solely as an obvious mechanism for permitting a solution to be achieved more quickly where the improvement in speed (quickly) is gleamed merely from the generic computer usage (i.e. mere automation of manual processes).
The applicant argues on page 14 through second paragraph no page 15 that the improvements described in the specification are reflected in the claims including filtering/sorting documents and creating records about those documents; however, creating records or annotations about documents and storing/maintaining them as electronic records is not enough to qualify as significantly more than the judicial exception (see MPEP 2106.05(I)(A). Therefore, for at least the reasons discussed above, applicant’s arguments are not persuasive and the respective 35 USC 101 rejections still stand.
The applicant argues at the second to last paragraph on page 15 that the other independent claims are patent eligible for similar reasons as discussed above as well as additional claim features. Upon further consideration, as noted above in the 35 USC 101 rejections, the rejections for claims 9, 10, and 17 have been withdrawn (as well as their associated dependent claims).
Applicant's arguments (see the last paragraph on page 16 through the last paragraph on page 18) have been fully considered but they are not persuasive. The applicant argues that the cited references do not teach all the claim limitations as amended including that (a) the Gipp reference does not classify the legal citations within a particular document relative to one another since Gipp teaches calculating numeric distance values between citations and Gipp has “absolutely no discussion” regarding categorizing a citation relationship or output a structural proximity class (see last paragraph on page 16 through last paragraph on page 17); and (b) the claims classifies the legal citations within a document into one of several discrete proximity categories with the categorical labeling being used downstream with contextual rules to classify the cited with relationship (see last paragraph on page 17 through the top of page 18). The Examiner respectfully disagrees.
With regard to argument (a), as noted in the 35 USC 103 rejections, the Gipp reference illustrates means for determining structural relationships between citations and discusses in various examples of how the system can discern when citations are in the same document and be able to label/assign a value according to paragraph [0074] that illustrates the respective structural similarity including same document, not same document part of same journal as well as if they are within the same chapter (e.g. section proximity). Therefore, the teachings of Gipp illustration determining a citation relationship for a citation pair. With regard to argument (b) about classifies the legal citations within a document into one of several discrete proximity categories, the Examiner notes that the claims indicate “to one of” followed by the various proximity categories. As shown in the 35 USC 103 rejections, Gipp determines closeness of citations with other references being relied upon to teach the classification process. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). With regard to the downstream portion of the argument, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As shown in the 35 USC 103 rejections, the combination illustrates determining similarity between citations with Pitkow illustrating a process (and desire) to reduce the set by pruning or discarding unrelated items.
Applicant's arguments (see the second paragraph on page 18 through second to last paragraph on page 18) have been fully considered but they are not persuasive. The applicant argues that Pitkow does not remedy the deficiencies of Gipp and that the Pitkow reference has no discussion of “applying rules only when the documents are associated with proximity metrics satisfying a threshold proximity category that corresponds to one of the plurality of discrete structural proximity categories”. The Examiner respectfully disagrees. As noted in the 35 USC 103 rejections, the rejection is based on the combination of references and not solely on the teachings of Pitkow, which were relied upon to illustrate that actions can be taken to reduce the entire set to be analyzed so that unrelated documents are not considered thus saving time (and computer resources) of a more detailed analysis of two unrelated documents to determine that they are unrelated; where the combination illustrates the usage of such techniques to reduce the document set (i.e. prune) based on the proximity metrics and contextual rules. Additionally, the applicant is arguing “applying rules only when the documents” satisfy the threshold which is not recited in the claim. As such, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Pitkow reference was not utilized to teach those limitations individually therefore applicant’s arguments are not persuasive.
Applicant's arguments (see last paragraph on page 18 through the last paragraph on page 22) have been fully considered but they are not persuasive. The applicant argues that the other respective dependent and independent claims are patentable for at least the reasons discussed above. The Examiner respectfully disagrees. As discussed above, the 35 USC 103 rejections have been updated accordingly in view of the new claim limitations where the cited prior art references teach or fairly suggest the claim limitations as recited thus the respective rejections of the independent and dependent claims still stand.
Examiner Comments
During review of applicant’s amendments and arguments, the Examiner noticed details regarding Figures 4A and/or 4B that can help differentiate the claims from the cited prior art of record. Although related to features of claims 9, 10, and 17, elaboration on the second input means and/or the display layout can provide key differences from the teachings of the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S SOMERS whose telephone number is (571)270-3567. The examiner can normally be reached M-F 11-8 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, Ann Lo can be reached on 5712729767. 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.
/MARC S SOMERS/Primary Examiner, Art Unit 2159 7/30/2026
Prosecution Insights