DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 to 5 and 17 to 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method and computer readable medium for finding a meaning of a word in a first language using a list of synonyms in a second language and morphological analysis of these synonyms. This judicial exception is not integrated into a practical application because there is no written description as to how this determination of word meanings is to be specifically utilized besides in generic natural language processing. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because there is no recitation of any components of a system into which word meanings are incorporated besides one or more generic processor and computer program.
Applicant’s claims are considered under an analysis of Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014).
Firstly, Step 1 requires an analysis of whether the claims fall within one of the four statutory categories of invention under 35 U.S.C. §101. Here, claims 1 to 5 are directed to a method and claims 17 to 19 are directed to an article of manufacture of a non-transitory computer readable medium. Accordingly, claims 1 to 5 and 17 to 19 meet the requirements of proper statutory categories of invention under 35 U.S.C. §101. (Step 1: YES)
Secondly, Step 2A, Prong One, requires an analysis of whether the claims are directed to a judicial exception of a law of nature, a natural phenomenon, or an abstract idea. Here, it is maintained that the independent claims set forth a judicial exception of an abstract idea. Generally, the independent claims are directed to an abstract idea because they represent a mental process that can be performed in the human mind alone, by mental intelligence, or with a pen and paper. That is, Applicant’s invention can be practiced simply by a person creating a graph on a piece of paper so that the graph includes a list of synonyms in a second language of a word in a first language and identifying morphological units of the synonyms in the second language. This is very similar to how one would understand meanings of words in a first language (e.g., French) by looking at a list of synonyms of these words and identifying morphological components of these synonyms in a second language (e.g., Latin). A French word of “convaincu” has synonyms of ‘persuade’, ‘assure’, and ‘satisfy’ in English. Then ‘persuade’ has morphological units of ‘per’ meaning ‘thoroughly’ or ‘fully’ and ‘suade’ meaning ‘urge’ or ‘advise’ with its roots in Latin. Similarly, ‘assure’ has morphological units of ‘ad’ meaning ‘to’ and ‘securus’ meaning ‘secure’ in its roots in Latin, and ‘satisfy’ has morphological units of ‘satis’ meaning ‘enough’ and ‘facere’ meaning ‘to make’ in its roots in Latin. Consequently, one can understand the meaning of a word ‘convaincu’ by looking at its morphological roots in English. Linguists can simply do this with a pencil, paper, and some readily-available dictionaries or with their own knowledge. This manner of understanding a meaning of a word and its synonyms from roots in Latin is simply a mental process, and can be formulated with a pen by drawing a graph on a piece of paper with the help of some readily available dictionaries. Specifically, Applicant’s invention is completely represented by constructing the graph of Figure 5 in the Specification. Applicant’s Figure 5 could be constructed by a human being with a pen and paper, and constructing this graph is simply a mental process. Accordingly, Applicant’s independent claims are directed to an abstract idea. (Step 2A, Prong One: YES)
Thirdly, Step 2A, Prong Two, requires an analysis of whether the claims recite additional elements that integrate the judicial exception into a practical application. Here, it is maintained that there is nothing in the claim language that expressly integrates determining a meaning of words in a language into a practical application. MPEP §2106.04(a)(2) III. B states that If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. The use of a physical aid (e.g., pencil and paper or a slide rule) to help perform a mental step does not negate the mental nature of the limitation, but simply accounts for variations in memory capacity from one person to another. Analogous patent case law held that “constructing a map of credit card numbers” was a limitation that was able to be performed “by writing down a list of credit card transactions made from a particular IP address.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). Independent claim 1 does not recite any structural limitations besides an abstract mapping of morphological units of words in a first language through a list of synonyms in a second language. Independent claim 17, at best, only adds a computer program to create this abstract mapping. MPEP §2106.04(a)(2) III. D states that both product claims (e.g., computer system, computer-readable medium, etc.) and process claims may recite mental processes. Accordingly, there is nothing in the claim language that expressly integrates determining a meaning of word in a first language from morphological units in a second language into a practical application. (Step 2A, Prong Two: NO)
Fourthly, Step 2B requires an analysis of whether the claim recites additional elements that amount to significantly more than the judicial exception. Here, it is maintained that the claims do not recite additional elements that amount to significantly more than a judicial exception because there are simply no additional elements recited. Applicant’s independent claims directed to deriving a meaning of a word in a first language from morphological analysis of synonyms in a second language do not relate to an improvement of a computer system. The Specification, at best, only provides a written description linking construction of a meaning graph to a general field of natural language processing, but natural language processing is not even set forth as a positive limitation of the independent claims. The independent claims are only directed to a process for representing meanings of words, but do not set forth any additional elements that provide anything significantly more than a data structure represented by a graph of Applicant’s Figure 5. Accordingly, there is nothing in the claim language that amounts to significantly more than the judicial exception of a mental process. (Step 2B: NO)
Consequently, Applicant’s independent claims do not provide patent-eligible subject matter under 35 U.S.C. §101.
Applicant’s dependent claims 2 to 5 and 18 to 19 do not provide patent-eligible subject matter under a similar analysis because they only relate to an application of this abstract idea to specific languages of English and Sanskrit and morphological units of Dhatus which are characteristic of roots of words in India corresponding to roots of words in Latin.
Claim Rejections - 35 USC § 103
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.
Claims 1, 4, 6 to 7, 10 to 11, 13, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nauze et al. (U.S. Patent Publication 2016/0132487) in view of Gao et al. (U.S. Patent Publication 2017/0011289).
Concerning independent claims 1 and 17, Nauze et al. discloses a method and computer program product of mapping between languages in natural language processing, comprising:
“receiving a word in the first language” – a ‘bike’ 114 may represent a concept of a two wheeled, manually powered vehicle (¶[0026]: Figure 1); here, ‘bike’ is a word in a first language of English;
“retrieving a list of synonyms of the word in the second language” – a translation of a word in English can result in a set of synonyms that could be used in French; an English word for ‘bicycle’ could generate a set of five synonyms in the French language (¶[0041]: Figure 2A); Figures 3A and 3B illustrate graphs that map an English word of ‘Bike’ into synonyms in French of ‘Bicyclette’, ‘Moto’, and ‘Tandem’;
“deriving the at least one meaning of the word in the first language from [the morphological units of] the second language” – a database can be used to link between languages by linking language specific synsets, or sets of synonym words; Euro WordNet links meanings between concepts of different languages; an automatic language translation service can be used to generate cross-language synonyms (¶[0038]): Figure 2A).
Concerning independent claims 1 and 17, Nauze et al. discloses determining a meaning of a word in a first language by generating synonyms in a second language. Nauze et al. does not disclose “mapping the synonyms into morphological units of the second language” and derive the at least one meaning of the word in the first language “from the morphological units”. However, Gao et al. teaches morphological analysis for learning word embeddings of new or rare words. (Abstract) One can analyze a root/affix of a new word so as to build its connections with known words. If a word is ‘inconveniently’, it is natural to guess that it is the adverb form of ‘inconvenient’ and the latter is probably the antonym of ‘convenient’. The morphological word similarity may act as an effective bridge to understanding new or rare words based on known words in the vocabulary. (¶[0016]) A machine learning process may include learning words and understanding text by leveraging morphological knowledge. (¶[0035]) The word ‘psychology’ may be pronounced as ‘psy-cho-lo-gy’ in which ‘psy’ means know or study, ‘cho’ means mind or soul, and ‘logy’ means academic discipline, so that one may guess psychology is an academic discipline that studies something in the mind or soul. If a new word is morphologically similar to several known words, then one may guess the meaning of the new word based on meanings of known words. (¶[0037] - ¶[0038]) An objective is to provide a machine learning system that uses morphological knowledge to enhance a deep learning framework for learning word embeddings to accomplish tasks with high efficiency and speed while using less computing resources. (¶[0005]) It would have been obvious to one having ordinary skill in the art to understand the meaning of a word in a first language from synonyms of that word in a second language in Nauze et al. by performing morphological analysis to understand a meaning of a word as taught by Gao et al. for a purpose providing a machine learning system that enhances a deep learning framework to accomplish tasks with high efficiency and speed while using less computing resources.
Concerning claim 4, Nauze et al. discloses languages of English and French. (¶[0030] and ¶[0041]: Figures 3A to 3B) English, then, can be “the first language”.
Concerning claims 6 and 20, Gao et al. teaches mapping words from a vocabulary into vectors for word embeddings in natural language processing. (¶[0015])
Concerning claim 7, Gao et al. teaches representing an input word as an n-dimensional representation (¶[0029]); morphological similarity may be calculated based on shared roots (or stems) and affixes (prefix and suffix) of two words; if each word w1 and w2 can be split into a set of morphemes denoted by F(w1) and F(w2), then the morpheme similarity of the two words may be calculated (¶[0055]). Here, if a word has two morphemes, then it is represented by a two dimensional vector. Compare Specification, ¶[0047] - ¶[0048], describing a Dhatu tensor as 2-Dimensional.
Concerning claim 10, Gao et al. teaches that word embeddings map words to vectors to represent a meaning of words (“representing the meaning of the word as a vector”). (¶[0015])
Concerning claim 11, Gao et al. teaches a machine learning model utilizing a neural network to map a meaning of words to word vectors as word embeddings (“inputting the vector as an embedding to a machine-learning model”). (¶0002] and ¶[0015]: Figure 1)
Concerning claim 13, Nauze et al. discloses a list of synonyms of ‘bike’, ‘dirt bike’, ‘touring’, ‘motor bike’, and ‘tandem’ in a first language of English, and a list of synonyms in a second language of ‘bicyclette’, ‘tourisme’, ‘moto’, and ‘tandem’ in a second language of French, but that the concept of ‘dirt bike’ does not have an analogous word in French. (¶[0042] - ¶[0043]: Figures 3A to 3B) Accordingly, ‘dirt bike’ is “the first of the two synonyms in the first language lacking synonyms in the second language”, but ‘motor bike’ is in “the list of synonyms in the first language, the list of synonyms in the first language including the second of the two synonyms.” That is, there is at least one additional synonym of ‘motor bike’ in the list of synonyms in the first language of English, and this synonym may have a corresponding synonym of ‘moto’ in a second language of French.
Claims 2 to 3, 5, 8, and 18 to 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nauze et al. (U.S. Patent Publication 2016/0132487) in view of Gao et al. (U.S. Patent Publication 2017/0011289) as applied to claims 1, 4, and 17 above, and further in view of Avinash (“Introducing Pratyay”).
Nauze et al. discloses determining synonyms of words in first and second languages of English and French, but does not disclose that a second language comprises Dhatus and that the morphological units are Dhatus, or that the second language is Sanskrit. However, it is somewhat arbitrary as to which languages synonym analysis are applied in Nauze et al. Certainly, it is known that Dhatus may be used to represent morphological units in Sanskrit as taught by Avinash. Moreover, Avinash teaches that it is known that a Dhatu may represent a root word and a Pratyay may be added as suffixes in Sanskrit. Consequently, a word in Sanskrit can be understood by breaking down the word into its Dhatu and its Pratyay, which is equivalent to “inverse morphological rules”. That is, a word is understood by a process that is inverse to forming the word by morphology of Dhatus and Pratyay to provide a meaning of a word in Sanskrit. It would have been obvious to one having ordinary skill in the art to understand the meaning of words from their morphology in Gao et al. with inverse morphological rules of Dhatus and Pratyay as taught by Avinash in order to understand the meanings of words in an application to words in Sanskrit.
Claims 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nauze et al. (U.S. Patent Publication 2016/0132487) in view of Gao et al. (U.S. Patent Publication 2017/0011289) as applied to claim 1 above, and further in view of Pfante (U.S. Patent Publication 2024/0143924).
Gao et al. arguably teaches these limitations implicitly, but does not expressly describe matching morphological units as “character spans” and “scoring span matches”. However, Gao et al. teaches determining morpheme similarity based on shared roots (or steps) and affixes (prefix or suffix), and appears to represent this similarity as a score in Equation 9. (¶[0052] - ¶[0055]: Equation (9)) Here, comparing morphological units of two words to understand a meaning of a word would implicitly be comparing “character spans”, as morphological units inherently are represented as a sequence of characters spanning a length corresponding to a given morpheme. Specifically, Pfante teaches an embodiment of identifying synonyms for all sub-strings, i.e., spans, along with their confidence scores to generate a list of candidate sub-strings having a confidence score higher than a predefined threshold. (¶[0107]) A method splits an input string into a plurality of segments and generates a confidence score for each sub-string of the plurality of sub-strings based on the relevance of identified synonyms. (¶[0131]: Figure 2) Pfante, then, teaches comparing sub-strings as spans and generating a score for these spans to identify synonyms. An objective is to provide a name normalization algorithm to enable fuzzy matches in named entity recognition. (¶[0005] - ¶[0006]) It would have been obvious to one having ordinary skill in the art to compare morphemes to determine morpheme similarity in Gao et al. by comparing spans to generate a score as taught by Pfante for a purpose of identifying synonyms in named entity recognition by name normalization.
Response to Arguments
Applicant’s arguments filed 08 December 2025 have been considered but are moot in view of new grounds of rejection.
Applicant provides some minor amendments and presents arguments traversing the prior rejection of the independent claims as being obvious under 35 U.S.C. §103 over Morimoto (U.S. Patent Publication 2022/0027397) in view of Gao et al. (U.S. Patent Publication 2017/0011289). Specifically, Applicant amends the independent claims to set forth that the mapping of synonyms into morphological units is “of the second language” and that the meaning is derived for a word “in the first language” from the morphological units “of the second language”. Specifically, Applicant argues that Morimoto does not map synonyms in a second language into morphological units of the second language. Applicant states that Gao et al. teaches morphological analysis of words by analyzing roots/affixes within a same language to connect them to known words, but argues that this reference does not teach applying this analysis to synonyms in a second language to derive meanings for a word in a first language. Applicant characterizes this morphological analysis as intra-language, but not cross-language. Applicant alleges that the modification of Morimoto by Gao et al. is improper because it relies upon hindsight reconstruction of Applicant’s disclosure as a roadmap, and the result would be a fundamental change in operation because the combination would not yield that claimed cross-language derivation from second language morphology.
Applicant’s amendments overcome the objections to the Specification.
Generally, Applicant’s arguments are not completely persuasive, but new grounds of rejection are set forth in this Office Action. Specifically, new grounds of rejection are set forth as directed to non-patent-eligible subject matter under 35 U.S.C. §101. Additionally, new grounds of rejection are set forth as directed to the independent claims being obvious under 35 U.S.C. §103 over Nauze et al. (U.S. Patent Publication 2016/0132487) in view of Gao et al. (U.S. Patent Publication 2017/0011289). Rejection of the independent claims no longer relies upon Morimoto as the rejection substitutes Nauze et al. The rejection of some of the dependent claims continues to rely upon Avinash (“Introducing Pratyay”) and Pfante (U.S. Patent Publication 2024/0143924). However, these new grounds of rejection no longer rely upon Lee et al. (U.S. Patent Publication 2019/0095433).
New grounds of rejection are set forth as directed to claims 1 to 5 and 17 to 19 representing an abstract idea that does not provide patent-eligible subject matter under 35 U.S.C. §101. These claims set forth a mental process that can be performed in the mind of a human or with minimal additional physical aids of a pen and paper and/or various dictionaries. Synonym lists of words in first and second language are readily obtained from translation dictionaries, and morphological analysis of a meaning of a word can be obtained from etymologies provided by standard dictionaries in most languages. However, these dictionaries might not be required according to variations in skill and memory capacity from one person to another. See CyberSource, supra.
Applicant’s arguments are being considered to the extent that they may be applicable to the new grounds of rejection. Specifically, Applicant’s argument is not persuasive that Gao et al. fails to apply morphological analysis across languages for an analysis of synonyms in a second language to derive the meaning of a word in a first language. Mainly, this argument appears to be only considering the references individually without addressing what one skilled in the art would understand by looking at the references in combination. 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).
Here, a concept of understanding a meaning of a word from its morphological units would be well known to a person skilled in the art whether there were one or two language involved. Nauze et al., at ¶[0038], discloses cross-language mapping so that language specific synsets can be used to generate cross-language synonyms. Although Nauze et al. is not directed to morphological analysis of words, this is taught by Gao et al. Applicant’s argument is not persuasive because cross-language mapping is expressly disclosed by Nauze et al. Even if Gao et al.’s morphological analysis is not performed between two languages, using synonyms to map meanings of words between two languages is disclosed by Nauze et al. Applicant’s argument then amounts to attacking the two references individually. Given that it is generally well known that a meaning of a word can be determined from the morphemes of its etymological derivation, this morphological analysis could be applied across two languages within an ordinary level of skill of one in the art of linguistics in the same way as it would be performed in one language. Logically, a meaning of word obtained from a morphological etymology of a word in a second language implies an indication of a meaning of a word in a first language because the two words are already determined to be synonyms by translation.
Nor are Applicant’s arguments persuasive about ‘hindsight’ and ‘fundamental change in principle of operation’. MPEP §2145 IX. A states that any judgement of obviousness is necessarily a reconstruction based on hindsight reasoning, but an obviousness rejection can be proper as long as it only takes into account knowledge that was within the level of ordinary skill in the art. Here, a rejection only relies upon two well known principles of linguistics: synonyms of words to be translated and morphological analysis of words as indications of word meaning. Similarly, Applicants’ argument as to a fundamental change in principle of operation is not persuasive because one skilled in the art could readily understand that these same two principles of linguistics could be combined. Once a set of synonyms is determined for corresponding words in two languages as characteristic of a standard translation dictionary, one skilled in the art could then apply a known method of understanding a meaning of a word in any language from morphological analysis of a word. Logically, if an indication of a meaning of a word in a second language is determined by morphological analysis, then it should necessarily follow that the that morphological analysis of a word in a second language would be indicative of a meaning of a word in the first language because the corresponding words in the two languages are synonyms by translation and consequently have the same meaning.
A determination of obviousness can be predicated on a rationale of KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385 (2007): (C) Use of known technique to improve similar devices (methods, or products) in the same way. See MPEP §2141. Here, Gao et al.’s morphological analysis of a word in a first language could be used to improve upon an understanding of a meaning of synonyms between two languages in the same way as in Nauze et al. That is, one skilled in the art could simply add on a morphological analysis of Gao et al. to improve upon a similar method using the synonym sets of Nauze et al. to determine a meaning of a word in a different language. There is nothing about this that ‘changes a principle of operation’ as it would be predictable that these two known principles could be combined to understand the meaning of words between two languages.
This Office Action is NON-FINAL.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Bjarnestam et al. and DeNero et al. disclose related prior art directed to determining a meaning of words in a first language from synonyms in a second language.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN LERNER whose telephone number is (571) 272-7608. The examiner can normally be reached Monday-Thursday 8:30 AM-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richemond Dorvil can be reached at (571) 272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARTIN LERNER/Primary Examiner
Art Unit 2658 January 26, 2026