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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/11/2026 has been entered.
Claim Status
Claims 1-2, 4-6, 8-16, and 18-21 are pending.
Response to Arguments
Applicant’s arguments, see remarks, filed 06/11/2026, with respect to claims 1-2, 4-6, 8-16, and 18-21 have been fully considered and are persuasive. The 103 rejection of claims 1-2, 4-6, 8-16, and 18-21 has been withdrawn.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 1-2, 4-6, 8-16, and 18-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The following is Examiner's analysis of the claimed invention under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG)
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. Claim 1 recites a process (method), claim 10 recites a machine (system), claim 19 recites a manufacture (non-transitory computer-readable storage device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. Claim 1 (and similar claims 10 and 19) recites “generating, via the first set of trained ML classifiers using the plurality of features, a plurality of probability values associated with the multiple content portions of the citationally-related case law document, the first set of trained ML classifiers comprises a first ML classifier and a second ML classifier, wherein: the first ML classifier is configured to receive the heuristics-based features as the input data and to generate a first set of probability values of the plurality of probability values, and the second ML classifier is configured to receive the statistics-based features as the input data and to generate a second set of probability values of the plurality of probability values” which falls within the mathematical concepts grouping of abstract ideas. The step of “generating probability values” is a mathematical calculation; therefore, the claim recites an abstract idea.
Claim 1 (and similar claims 10 and 19) recites “ranking, by the one or more processors, the multiple content portions of the citationally- related case law document based on the plurality of probability values” which falls within the mathematical concepts grouping of abstract ideas. The step of “ranking content based on probability values” is a mathematical calculation; therefore, the claim recites an abstract idea.
Claim 1 (and similar claims 10 and 19) recites “selecting, by the one or more processors, a highest ranked content portion of the multiple content portions of the citationally-related case law document as an overruling passage of the citationally-related case law document” which falls within the mental processes grouping of abstract ideas. The step of “selecting a highest ranked content portion” covers performance of the limitation in the mind; therefore, the claim recites an abstract idea.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim 1(and similar claims 10 and 19) recites “receiving, at a search field presented at a graphical user interface (GUI), a user input; receiving, by one or more processors and in response to the user input, first case law data from a data source, the first case law data associated with a first case law document; receiving, by the one or more processors, second case law data from the data source, the second case law data associated with a citationally-related case law document that overrules at least a portion of the first case law document; providing, by the one or more processors, a plurality of features extracted from multiple content portions of the citationally-related case law document as input data to a first set of trained machine learning (ML) classifiers, the plurality of features includes: a set of heuristics-based features extracted from the multiple content portions of the citationally-related case law document, and a set of statistics-based features extracted from the multiple content portions of the citationally-related case law document” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Claim 1(and similar claims 10 and 19) recites “displaying, by the one or more processors, the overruling passage via the GUI, based on user selection of the first case law document, by: presenting a visual indicator of the overruling passage with an identifier of the first case law document; automatically scrolling, in a document pane of the GUI, to the portion of the first case law document; and presenting, with the document pane, a pop-up window showing the overruling passage” which is insignificant-extra solution activity tangentially related to the invention.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
The claim recites “displaying, by the one or more processors, the overruling passage via the GUI, based on user selection of the first case law document, by: presenting a visual indicator of the overruling passage with an identifier of the first case law document; automatically scrolling, in a document pane of the GUI, to the portion of the first case law document; and presenting, with the document pane, a pop-up window showing the overruling passage” which is transmitting data over a network. The courts have determined transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
There is no indication that the elements of the claim, individually nor in combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
For the reasons above, claims 1, 10, and 19 are rejected as being directed to nonpatentable subject matter under §101. This rejection applies equally to the dependent claims. The additional limitations of the dependent claims are addressed briefly below:
Regarding claim 2
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the plurality of probability values associated with the multiple content portions of the citationally-related case law document indicate a probability that a corresponding content portion is relevant to overruling at least the portion of the first case law document” which is additional detail about the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 4
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the heuristics-based features include one or more similarity features indicating a similarity between one or more particular headnotes and the multiple content portions of the citationally-related case law document, one or more distance features indicating a positional distance between one or more particular paragraphs and the multiple content portions of the citationally-related case law document, one or more binary features indicating whether the multiple content portions of the citationally-related case law document include particular text, or a combination thereof” which is additional detail about the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 5
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the one or more particular headnotes include the particular text, wherein the one or more particular paragraphs include the particular text, and wherein the particular text includes one or more overruling terms or language patterns, a citation to the first case law document, a pincite to the first case law document, or a combination thereof” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 6
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the statistics-based features include term frequency-inverse document frequency (TF-IDF) vectors generated based on the multiple content portions of the citationally-related case law document” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 8
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the first ML classifier comprises a feed forward neural network (FNN) classifier, and wherein the second ML classifier comprises an extreme gradient boosting (XGBoost) classifier” which is a mathematical calculation.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 9
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein generating the plurality of probability values associated with the multiple content portions of the citationally- related case law document includes, for each content portion of the multiple content portions of the citationally-related case law document, combining a value from the first set of probability values that is associated with the content portion with a value from the second set of probability values that is associated with the content portion” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 11
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the one or more processors are further configured to: select, by the one or more processors, a highest ranked subset of the multiple content portions of the citationally-related case law document; provide, by the one or more processors, a second plurality of features extracted from the highest ranked subset as input data to a second set of trained ML classifiers to generate probability values associated with multiple headnotes of the first case law document; and rank, by the one or more processors, the multiple headnotes of the first case law document based on the associated probability values” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 12
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the second plurality of features include one or more similarity features indicating a similarity between the highest ranked subset and the multiple headnotes of the first case law document” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 13
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the second set of trained ML classifiers comprises a linear ML classifier” which is a mathematical algorithm.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 14
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “ rank, by the one or more processors, the multiple content portions of the first case law document based on the associated probability values; select, by the one or more processors, a highest ranked content portion of the multiple content portions of the first case law document as an overruled-in-part passage of the first case law document” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “provide, by the one or more processors, a third plurality of features extracted from multiple content portions of the first case law document and a highest ranked headnote of the multiple headnotes as input data to a third set of trained ML classifiers to generate the associated probability values; and display, by the one or more processors, the overruled-in-part passage via the GUI” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 15
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim recites “wherein displaying the overruled-in-part passage includes highlighting or visually indicating the overruled-in-part passage, automatically scrolling through the first case law document to a beginning of the overruled-in-part passage, or both” which is insignificant-extra solution activity tangentially related to the invention.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The claim recites “wherein displaying the overruled-in-part passage includes highlighting or visually indicating the overruled-in-part passage, automatically scrolling through the first case law document to a beginning of the overruled-in-part passage, or both” which is transmitting data over a network. The courts have determined transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
Regarding claim 16
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the third plurality of features includes one or more similarity features indicating a similarity between the highest ranked headnote and the multiple content portions of the first case law document, one or more distance features indicating a positional distance between one or more paragraphs linked to the highest ranked headnote and the multiple content portions of the first case law document, one or more binary features indicating whether the multiple content portions of the first case law document include holding text or language patterns, or a combination thereof” which falls within the mental processes grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 18
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the overruled-in-part passage comprises a sentence, a paragraph, or a footnote of the citationally-related case law document” which falls within the mental processes grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 20
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a manufacture (non-transitory computer-readable storage device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “wherein the overruled-in-part passage comprises a sentence, a paragraph, or a footnote of the citationally-related case law document” which falls within the mental processes grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 21
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a manufacture (non-transitory computer-readable storage device).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “the plurality of sets of trained ML classifiers includes: the first set of ML classifiers including a first feed forward neural network (FNN) classifier with a gradient boosting classifier which generates first probability outputs; a second set of ML classifiers including a linear classifier which uses the first probability outputs from the first set of ML classifiers to generate second probability outputs; and a third set of ML classifiers including a second FNN classifier which uses the first probability outputs of the first set of ML classifiers and the second probability outputs of the second set of ML classifiers to generate third probability outputs; and the ranking of the multiple content portions uses the first probability outputs from the first set of ML classifiers and the third probability outputs from the third set of ML classifiers” which falls within the mathematical concepts grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Taken alone, the additional elements of the dependent claims do not amount to significantly
more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an
ordered combination adds nothing that is not already present when looking at the elements taken
individually. There is no indication that the combination of elements improves the functioning of a
computer or improves any other technology. Their collective functions merely provide conventional
computer implementation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brooks Hale whose telephone number is 571-272-0160. The examiner can normally be reached 9am to 5pm est.
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/B.T.H./Examiner, Art Unit 2166
/SANJIV SHAH/Supervisory Patent Examiner, Art Unit 2166
Prosecution Insights