DETAILED ACTION
This is responsive to the RCE filed 16 March 2026.
Claims 21-49 are currently pending and considered below.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
Regarding the 35 USC 101 rejections, Applicant argues:
The claimed approach overcomes constraints present in then-conventional technology to optimize the ability of the computer technology to achieve these advantageous results. The human mind is clearly not capable of practically performing the claimed approach.
The Examiner respectfully disagrees. A human may determine a plurality of text portions by dividing the plurality of text documents based on one or more text division constraints, each of the plurality of text portions having a text length that falls below an initial maximum text chunk size, and wherein the one or more text division constraints includes a document structure constraint, and dividing the plurality of text documents includes dividing each of the plurality of text documents based on the structural information associated with the text document (e.g. a human may segment text documents into text portions less than a particular size based on certain constraints and document structural information); determine an initial grouping of the plurality of text portions into an initial plurality of text chunks, each of the initial plurality of text chunks including one or more of the plurality of text portions (e.g. a human may classify the text portions); determine an updated grouping of the plurality of text portions into an updated plurality of text chunks by redistributing the updated plurality of text chunks in accordance with a reduced maximum text chunk size, the updated plurality of text chunks being equal in number to the initial plurality of text chunks (e.g. a human may reclassify, in equal number as the classified texts, the text portions by redistributing the classified text portions in accordance with a reduced maximum text chunk size); determine a plurality of text generation prompts each containing a respective text chunk of the updated plurality of text chunks, wherein determining a first text generation prompt of the plurality of text generation prompts involves filling a fillable portion of a text generation prompt template with a first respective text chunk, wherein the first text generation prompt and the text generation prompt template each include a natural language instruction to generate novel text based on one or more text portions included in the respective text chunk (e.g. a human may generate prompts each containing a respective text chunk of the classified texts, wherein determining a first text generation prompt of the plurality of text generation prompts involves filling a fillable portion of a text generation prompt template with a first respective text chunk, wherein the first text generation prompt and the text generation prompt template each include a natural language instruction to generate novel text based on one or more text portions included in the respective text chunk).
Applicant further argues:
The amended claims presented with this response recite improved computer technology that addresses problems associated with then-conventional technology. As noted above, the claims now recite, in addition to other technology features, (1) receiving structural information characterizing structures of the plurality of text documents; and (2) determining via a processor a plurality of text portions by dividing the plurality of text documents based on one or more text division constraints, each of the plurality of text portions having a text length that falls below an initial maximum text chunk size. The one or more text division constraints includes a document structure constraint, and dividing the plurality of text documents includes dividing each of the plurality of documents based on the structural information associated with the text document. Support for these amendments is found throughout the application, including for example at paras. 0447-0609.
As described in the specification, the claims recite a technical solution to technical problems presented by computer technology in connection with the generation of novel text from a set of input documents. For example, they recite algorithms that address computer system constraints of the types discussed above. In particular, they recite technology that retains the sematic content associated with the raw input documents. They can reduce overhead associated with prompt instructions, and yield improved responses. These and other advantages are described, for example, at paras. 0039-0044 of the specification.
Even assuming arguendo that the claims recite one of more steps that may be capable of being performed in the human mind, which the Applicant does not concede, any such abstract idea is incorporated into a patent-eligible practical application.
However, the claims do not recite a specific improvement to a particular technology or provide a particular technical solution to a technical problem. Instead, the additional elements merely use generic computing components as tools to implement the abstract idea. In other words, the additional elements merely use routine technology to apply the judicial exception. Therefore, the claims do not integrate the abstract idea into a practical application.
In particular, the claims do not impose any limits on how the query message is received, how each of the plurality of text generation prompts is transmitted, how one or more text response messages is received, how the novel text is generated or how the received one or more text response messages are transmitted i.e., the claims fail to recite details of how a solution to a problem is accomplished. These limitations therefore represent extra-solution activity because they are mere nominal or tangential addition to the claims. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Applicant also argues:
The claim features, when considered as a whole in connection with the document structure-related features, for example in combination, define logical structures and processes that provide the advantageous results. They characterize a software-implemented algorithm that optimizes certain processing limitations of computer technology. Both the Federal Circuit and the USPTO have acknowledged that software improvements of these types can be non-abstract improvements to computer technology. "Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that '[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features by rather by logical structures and processes."' (USPTO December 5, 2025, memorandum regarding MPEP changes based on Ex Parte Desjardins (Appeal No. 2024-000567 (PTAB September 26, 2005), citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Moreover, the Desjardins Memo describes examples of claims that improve technology or a technical field, and that are not directed to an abstract idea, as including data structures such as those recited in claims 21, 31 and 37.
The Desjardins Memo also reiterates that it is critical for examiners to look at the claim "as a whole" and "as an ordered combination, without ignoring requirements of the claims.""'Examiners [] should not evaluate claims at such a high level of generality' that potentially meaningful technical limitations are dismissed without adequate explanation." (Desjardins Memo, quoting Desjardins.) Consistent with this approach for evaluating whether a claim as a whole is directed to patent eligible subject matter, the Desjardins Memo notes that an important consideration is the extent to which the claim "covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome."
The pending claims recite patent-eligible computer technology that falls squarely within these guidelines and law. The processing steps including text chunking based on constraints, including document structure constraints, grouping the text chunks, updating the text chunks by a redistribution in accordance with certain factors, and determining prompts based on the text chunks by filling a template with instructions and defined information, in combination with the other features of the claims, defines a particular solution and way to address the problems associated with then-conventional computer technology. As described above, for example, the claimed technology provides enhanced results by accommodating semantic content associated with the input documents. Significantly, this recited solution cannot reasonably be characterized as a recitation of the words "apply it" to implement an abstract idea.
However, the additional elements 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. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Further, unlike the claims in Enfish, the pending claims do not specifically improve computer functionality. They merely use generic computer functions to implement the abstract idea.
Applicant finally summarizes:
In summary, independent claims 21, 31 and 37, and dependent claims 27-30, recite computer technology that cannot be practically performed by the human mind. Computer processing technology is needed to practically implement the recited algorithms and to achieve the associated advantageous results they provide. These claims therefore integrate any abstract idea into a practical application.
The Examiner respectfully disagrees. As shown above, the performed computer processing merely applies the abstract idea using generic computer components. The claimed abstract idea is not integrated into a practical application because the additional elements are recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components.
The claims do not recite a specific improvement to a particular technology. Instead, the additional elements merely use generic computing components as tools to implement the abstract idea. Therefore, the claims do not integrate the abstract idea into a practical application.
All of Applicant’s arguments have been addressed and they are not persuasive.
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 21-43 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Further, this judicial exception is not integrated into a practical application.
In claims 21, 31 and 37, the limitations
That is, other than reciting a “communication interface”, a “processor” and a “client machine” (claims 21, 31 and 37), one or more “non-transitory computer readable media having instructions stored thereon for performing a method” (claim 31) and a “system including a communication interface, a hardware processor, and a storage device, the system configured to perform a method” (claim 37) nothing in the claims precludes the steps from practically being performed in the mind.
For example, a person may determine a plurality of text portions by dividing the plurality of text documents based on one or more text division constraints, each of the plurality of text portions having a text length that falls below an initial maximum text chunk size, and wherein the one or more text division constraints includes a document structure constraint, and dividing the plurality of text documents includes dividing each of the plurality of text documents based on the structural information associated with the text document (e.g. a human may segment text documents into text portions less than a particular size based on certain constraints and document structural information); determine an initial grouping of the plurality of text portions into an initial plurality of text chunks, each of the initial plurality of text chunks including one or more of the plurality of text portions (e.g. a human may classify the text portions); determine an updated grouping of the plurality of text portions into an updated plurality of text chunks by redistributing the updated plurality of text chunks in accordance with a reduced maximum text chunk size, the updated plurality of text chunks being equal in number to the initial plurality of text chunks (e.g. a human may reclassify, in equal number as the classified texts, the text portions by redistributing the classified text portions in accordance with a reduced maximum text chunk size); determine a plurality of text generation prompts each containing a respective text chunk of the updated plurality of text chunks, wherein determining a first text generation prompt of the plurality of text generation prompts involves filling a fillable portion of a text generation prompt template with a first respective text chunk, wherein the first text generation prompt and the text generation prompt template each include a natural language instruction to generate novel text based on one or more text portions included in the respective text chunk (e.g. a human may generate prompts each containing a respective text chunk of the classified texts, wherein determining a first text generation prompt of the plurality of text generation prompts involves filling a fillable portion of a text generation prompt template with a first respective text chunk, wherein the first text generation prompt and the text generation prompt template each include a natural language instruction to generate novel text based on one or more text portions included in the respective text chunk).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements – a “communication interface”, a “processor” and a “client machine” (claims 21, 31 and 37), one or more “non-transitory computer readable media having instructions stored thereon for performing a method” (claim 31) and a “system including a communication interface, a hardware processor, and a storage device, the system configured to perform a method” (claim 37) which are recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components.
The claims also recite the additional elements “receiving via a communication interface a query message identifying a plurality of text documents”, “receiving structural information characterizing the structures of the plurality of text documents”, “transmitting each of the plurality of text generation prompts to a text generation modeling system”, “receiving one or more text response messages in response to the transmission of the plurality of text generation prompts, wherein the one or more text response messages include novel text generated by the text generation modeling system in response to the plurality of text generation prompts”, and “transmitting to a client machine the received one or more text response messages”. The claims do not impose any limits on how the query message or the structural information are received, how each of the plurality of text generation prompts is transmitted, how one or more text response messages is received, how the novel text is generated, or how the received one or more text response messages are transmitted i.e., the claims fail to recite details of how a solution to a problem is accomplished. These limitations therefore represent extra-solution activity because they are mere nominal or tangential addition to the claims. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims are therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As stated above, the claims recite the additional limitations of a “communication interface”, a “processor” and a “client machine” (claims 21, 31 and 37), one or more “non-transitory computer readable media having instructions stored thereon for performing a method” (claim 31) and a “system including a communication interface, a hardware processor, and a storage device, the system configured to perform a method” (claim 37). However, these are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications (see Applicant’s specification [0053], [0123] and [0321]-[0322]). Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
“receiving via a communication interface a query message identifying a plurality of text documents”, “receiving structural information characterizing the structures of the plurality of text documents”, “transmitting each of the plurality of text generation prompts to a text generation modeling system”, “receiving one or more text response messages in response to the transmission of the plurality of text generation prompts, wherein the one or more text response messages include novel text generated by the text generation modeling system in response to the plurality of text generation prompts”, and “transmitting to a client machine the received one or more text response messages”. The claims do not impose any limits on how the query message or the structural information are received, how each of the plurality of text generation prompts is transmitted, how one or more text response messages is received, how the novel text is generated, or how the received one or more text response messages are transmitted i.e., the claims fail to recite details of how a solution to a problem is accomplished. These limitations represent the extra-solution activity of receiving/transmitting data and generating novel text based on text generation modeling system (e.g. AI) prompt which are well-understood, routine and conventional activities. Thus, taken alone, the additional elements 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. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
The dependent claims recite:
wherein the plurality of text portions are arranged in the updated plurality of text chunks in sequence corresponding with their appearance in the plurality of text documents;
wherein determining the updated grouping of the plurality of text portions comprises iteratively reducing the initial maximum text chunk size until a terminating condition is met, the method further comprising determining whether the terminating condition is met;
wherein determining whether the terminating condition is met comprises determining whether an additional reduction in maximum text chunk size would lead to an increased number of text chunks needed to contain the plurality of text portions;
wherein the one or more text division constraints including a domain-specific rule indicating one or more criteria for dividing the plurality of text documents into the plurality of text portions, wherein the domain-specific rule discourages separating a question portion of text from an answer portion of text;
wherein the one or more text division constraints including a domain-specific rule indicating one or more criteria for dividing the plurality of text documents into the plurality of text portions, wherein the domain-specific rule discourages separating text belonging to a common logical division of a text document of the plurality of text documents;
wherein the natural language instruction instructs the generative language model to identify a plurality of events discussed in the plurality of text documents, and wherein the response message includes a plurality of event entries for generating at the client machine a timeline representing the plurality of events;
wherein the natural language instruction instructs the generative language model to summarize the one or more text portions, and wherein the novel text includes a summary of all or a portion of the plurality of text documents;
wherein the natural language instruction instructs the generative language model to evaluate the plurality of text documents for compliance with a predetermined policy, and wherein the novel text identifies one or more instances in which the plurality of text documents fail to comply with the predetermined policy;
wherein the natural language instruction instructs the generative language model to answer a question based on the plurality of text documents for compliance with a predetermined policy, and wherein the novel text includes an answer to the question;
wherein the method comprises generating, by the text generation modeling system, the one or more text response messages;
determining a plurality of document structure prompts each containing respective text of the plurality of documents, wherein determining a first document structure prompt of the plurality of document structure prompts involves filling a fillable portion of a document structure prompt template with first respective text, and the document structure prompt includes a natural language instruction to generate document structure information based on the text; transmitting each of the plurality of document structure prompts to a large language model; and receiving one or more document structure response messages in response to the transmission of the plurality of document structure prompts, wherein the one or more document structure response messages include document structure information generated by the large language model in response to the plurality of document structure prompts;
wherein the document structure information comprises one or more regular expressions.
The additional recited limitations further narrow the steps of the independent claims without however providing “a practical application of” or "significantly more than" the underlying “Mental Processes” abstract idea. Therefore, the dependent claims are also not patent eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL G NEWAY whose telephone number is (571)270-1058. The examiner can normally be reached Monday-Friday 9:00am-5:00pm EST.
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/SAMUEL G NEWAY/Primary Examiner, Art Unit 2657