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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 March 2026 has been entered.
Status of Claims
Claims 1, 8, and 15 have been amended.
Claims 7 and 14 have been previously cancelled.
Claims 1-6, 8-13, and 15-20 are currently pending and have been examined.
Response to Applicant's Remarks
35 U.S.C. § 101
Applicant’s remarks, see Page(s) 8-13, filed 10 March 2026, with respect to the 35 U.S.C. § 101 rejections, have been fully considered, but are not persuasive.
Applicant submits that the claims of the current application recite limitations that cannot practically be performed in the human mind.
Examiner respectfully disagrees, as a human mind can perform a conversion of text into machine-readable feature representation, identify a set of features in a set of data segments, and classify the set of features. These are similar to the examples of mental processes described in MPEP 2106.04(a)(2):
• a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
• claims to "comparing BRCA sequences and determining the existence of alterations," where the claims cover any way of comparing BRCA sequences such that the comparison steps can practically be performed in the human mind, University of Utah Research Foundation v. Ambry Genetics, 774 F.3d 755, 763, 113 USPQ2d 1241, 1246 (Fed. Cir. 2014);
• a claim to collecting and comparing known information (claim 1), which are steps that can be practically performed in the human mind, Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067, 100 USPQ2d 1492, 1500 (Fed. Cir. 2011); and
• a claim to identifying head shape and applying hair designs, which is a process that can be practically performed in the human mind, In re Brown, 645 Fed. App'x 1014, 1016-17 (Fed. Cir. 2016) (non-precedential).
Additionally, as described in MPEP 2106.04(a)(2), “Claims can recite a mental process even if they are claimed as being performed on a computer”. And although the claims recite ‘a memory’, ‘one or more processors’, ‘a neural language model’, ‘a non-transitory computer readable medium’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’. These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
⦁ mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘a memory’, ‘one or more processors’, ‘a non-transitory computer readable medium’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
⦁ generally linking the use of the judicial exception to a particular technological environment or field of use (‘a neural language model’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’).
Furthermore, Applicant submits that the claims integrate the abstract idea into a practical application by improving the functionality of a computer.
Examiner respectfully disagrees, as the claim limitations are not indicative of integration into a practical application, such as an improvement to the functioning of a computer or other technical field, as considered below in view of MPEP 2106. In particular, an improvement in the judicial exception itself is not an improvement in technology. Applicant’s improvement in this case is not an improvement to the functioning of a computer, or to any other technology or technological field.
The following are examples of eligible subject matter based on technological improvements: see, e.g., McRO, 837 F.3d at 1315 ("The claimed process uses a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters."); Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1304 (Fed. Cir. 2018) (finding patent eligible a claim drawn to a behavior-based virus scan that protects against viruses that have been "cosmetically modified to avoid detection by code-matching virus scans"); Enfish, 822 F.3d at 1330, 1333 (discussing patent eligible claims directed to "an innovative logical model for a computer database" that included a self-referential table allowing for greater flexibility in configuring databases, faster searching, and more effective storage); CardioNet, LLC v. InfoBionic, Inc., 955 F.3d 1358, 1368 (Fed. Cir. 2020) (explaining that the claims at issue focus on a specific means for improving cardiac monitoring technology; they are not "directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery" (quoting McRO, 837 F.3d at 1314)).
In contrast, the claims of the current application are similar to gathering and analyzing information using conventional techniques and displaying the result (TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48), wherein the courts have indicated not to be sufficient to show an improvement to technology.
To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (see MPEP 2106.05(a)).
Instead, the claims recite the following additional elements: ‘a memory’, ‘one or more processors’, ‘a neural language model’, ‘a non-transitory computer readable medium’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’. These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
⦁ mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘a memory’, ‘one or more processors’, ‘a non-transitory computer readable medium’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
⦁ generally linking the use of the judicial exception to a particular technological environment or field of use (‘a neural language model’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’).
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.
Claim(s) 1-6, 8-13, and 15-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim(s) 1, 8, and 15 recite(s) a system and series of steps for evaluating text and providing a list of candidate legal authorities, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (observation, evaluation, judgment, opinion). These concepts are grouped as mental processes.
The limitation(s) of, ‘extracting…a set of data segments from input data…’; ‘analyzing text within the input data’; ‘performing a conversion of the text into a machine-readable feature representation…’; ‘identifying…a set of features in the set of data segments…’; ‘classifying the set of features…’; ‘determining…a set of candidate legal authorities based on the set of features…’; ‘pruning…the set of candidate legal authorities to generate a reduced set of candidate legal authorities’; ‘generating a relevance score based on a measure of similarity between classification codes…’; ‘removing candidate legal authorities…’; ‘outputting…a ranked set of legal authorities’, as drafted, recite a process that, under broadest reasonable interpretation, is/are mental processes. Accordingly, the claim(s) recite(s) an abstract idea.
The judicial exception is not integrated into a practical application. In particular, the claim(s) recite(s) the additional element(s) of ‘a memory’, ‘one or more processors’, ‘a neural language model’, ‘a non-transitory computer readable medium’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’. These additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
⦁ mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘a memory’, ‘one or more processors’, ‘a non-transitory computer readable medium’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
⦁ generally linking the use of the judicial exception to a particular technological environment or field of use (‘a neural language model’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’).
Claim(s) 2-6, 9-13, and 16-20 further recite(s) the system and series of steps for evaluating text and providing a list of candidate legal authorities, which under broadest reasonable interpretation, is analogous to concepts performed in the human mind (observation, evaluation, judgment, opinion). These concepts are grouped as mental processes. Accordingly, the claim(s) recite(s) an abstract idea.
The judicial exception is not integrated into a practical application. The additional elements are recited at a high-level of generality such that in conjunction with the abstract limitations, they amount to no more than:
⦁ mere instructions to apply the exception using generic computer components (i.e., generic computer components performing generic computer functions) (‘a memory’, ‘one or more processors’, ‘a non-transitory computer readable medium’). In their broadest reasonable interpretation, the additional element(s) comprise(s) only a processor, instructions in memory, a display, a receiver, and a transmitter, being used to implement the functions of the abstract idea. Accordingly, the claims do not amount to more than a recitation of the words "apply it" (or an equivalent) or more than mere instructions to implement an abstract idea or other exception in a generic computing environment (see MPEP 2106.05(f) Mere Instructions to Apply an Exception). Thus, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim(s) is/are directed to the judicial exception.
⦁ generally linking the use of the judicial exception to a particular technological environment or field of use (‘a neural language model’, ‘natural language processing including at least one of tokenization, vectorization, stemming, lemmatization, or normalization’, ‘a machine learning logic’, ‘a rule-based logic’).
As analyzed above, the limitations as an ordered combination, are merely applying the abstract idea in a generic computing environment. In addition, the claims do not improve functionality of a computer or improve any other technology. Thus, claims 1-6, 8-13, and 15-20 are ineligible as the claims do not recite additional elements which result in significantly more than the abstract idea itself.
Novelty/Non-Obviousness
The subject matter of claims 1-6, 8-13, and 15-20 is not taught by the cited prior art and is considered novel. However, claims 1-6, 8-13, and 15-20 remain rejected under 35 U.S.C. 101 as described above.
The closest prior art of record are Al-Kofahi (U.S. Patent App. Pub. No. 20120036125), Rollins (U.S. Patent App. Pub. No. 20170212882), Custis (U.S. Patent App. Pub. No. 20090198674), Tonuzi (U.S. Patent App. Pub. No. 20210240926), Behtash (U.S. Patent App. Pub. No. 20210109958), and Huang (Context-aware legal citation recommendation using deep learning, 2021).
The cited prior art, taken either individually or in combination with other prior art of record, fails to teach or suggest classifying the set of features into (i) legal-issue features corresponding to one or more points of law and (ii) fact features corresponding to a set of facts, determining a set of candidate legal authorities based on the set of features, and applying a neural language model to prioritize candidate legal authorities corresponding to the legal-issue features over candidate legal authorities corresponding to the fact features.
Conclusion
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/Wayne S. Murray/Examiner, Art Unit 3628