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 .
Response to Amendment
This Final Office action is responsive to the communication filed under 37 C.F.R. § 1.111 on February 18, 2026 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1, 4, 7, 10, 11, 14, 17, and 19 are now amended.
Claim 9 is now canceled.
New claim 21 is now added.
Claims 1–8 and 10–21 are pending in the application.
Response to Arguments
The present amendment resolves all of the issues in the previous Office Action, and therefore, the objections and prior art rejections are hereby withdrawn.
However, the amendment also introduces several pieces of new matter into the claims, and at least one point of indefiniteness for the independent claims, rejecting several new grounds of rejection under 35 U.S.C. §§ 112(a) and 112(b).
To be clear, the lack of a prior art rejection in this Office Action does not imply allowability of the disclosed invention over the prior art. Rather, because the Applicant amended the claims to recite an invention that is not disclosed by either the prior art or the Applicant’s own specification, a rejection under 35 U.S.C. § 112(a) without rejections under 35 U.S.C. §§ 102 or 103 is necessary. If the new matter is removed from the claims without further narrowing of scope, it is possible (and even likely) that the claims may once again read on prior art, since the claims will no longer require a disclosure of the removed new matter at that time.
In any case, since all of the claims are rejected, the Applicant’s request for an allowance (Response 14) is respectfully denied.
Claim Rejections – 35 U.S.C. § 112(a)
The following is a quotation of 35 U.S.C. § 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), first paragraph:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1–8 and 10–21 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 — First Ground of Rejection (AI/ML Model with Unaltered Output)
The amended claim limitations are not supported by the original disclosure. Specifically, amended Claim 1 recites a step of “ creating the digestible data by pre-digesting, via a first artificial intelligence and machine learning (AI/ML) model that is trained to perform the pre-digesting, the input data, the analytics, and the association, wherein the digestible data comprises the input data, the analytics, and the association.” This claims a machine learning model specifically trained to receive a defined set of inputs and output that exact same set of inputs without alteration.
A review of the specification reveals no disclosure that reasonably conveys to a person having ordinary skill in the art that the inventor had possession of an artificial intelligence model trained to act as a pure identity function. While paragraph [0097] and original Claim 7 broadly mention AI/ML models trained to perform digesting, there is no written description to support a model trained to ingest “the input data, the analytics, and the association” solely to spit them back out exactly as received. This is what the claim now requires, because the claim defines “the digestible data” to include “the input data, the analytics, and the association,” yet the claim also says that the digestible data is created “by pre-digesting . . . the input data, the analytics, and the association.”
Because the specification does not demonstrate possession of this route-copying model behavior, the claim introduces new matter.
Claim 1 — Second Ground of Rejection (Double-Creation of Digestible Data)
The amendment introduces a sequence of operations that lacks support in the original specification. Amended Claim 1 now recites a process that creates two copies of the same digestible data.
As a reminder, both claim 1 and the specification define the digestible data as comprising “the input data, the analytics, and the association.” (See Amended Claim 1) (last two lines) and (Spec. ¶ 15). As presently written, claim 1 produces a first copy of the digestible data in the third, fourth, and fifth steps of the method:
producing, based on the first template definition, input data from the transformed image of the at least one physical document;
computing, based on the transforming and the producing, analytics that identify at least one parameter of a result of the transforming and the producing;
associating, via an association, the input data with the analytics;
Then, in the amended portion, claim 1 now produces a second copy of the digestible data by “pre-digesting” it with the AI/ML model to produce itself:
creating the digestible data by pre-digesting, via a first artificial intelligence and machine learning (AI/ML) model that is trained to perform the pre-digesting, the input data, the analytics, and the association, wherein the digestible data comprises the input data, the analytics, and the association.
The original disclosure does not disclose this highly specific architectural pipeline—namely, generating the finalized data components outside of the AI/ML model and then routing those completed components into the AI/ML model just to retrieve them again. The specification fails to demonstrate that the inventor possessed this sequential, duplicative arrangement at the time of filing.
Claim 1 — Third Ground of Rejection (Pre-Digesting)
Irrespective of the other two grounds of rejection above, the written description does not disclose an “artificial intelligence and machine learning (AI/ML) model that is trained to perform the pre-digesting.” The word and/or concept of “pre-digesting” does not appear anywhere in the written description. The Applicant’s representative refers to this as a re-labeling of “digesting” on page 11 of the Response, but such a relabeling—where the prefix “pre” is added to the word “digesting”—has the substantive effect of changing the “digesting” process to something that happens before the digesting.
While applicants are generally encouraged to act as their own lexicographers, they cannot redefine terms to have their opposite meanings unless the written description is very clear about the new definition, see MPEP § 2173.05(a) (subsection III.), and either way, the freedom to act as one’s own lexicographer certainly ends after the filing date of the claimed invention. See 35 U.S.C. § 132(a).
Claims 2–8 and 21
Claims 2–8 and 21 depend from claim 1, and are therefore rejected under 35 U.S.C. § 112(a) because they incorporate the new matter of their parent claim by reference.
Claims 11–20
Independent claims 11 and 17 were amended to recite the same new matter as claim 1, and are therefore rejected for all three of the same reasons.
Claims 12–16 depend from claim 11, and claims 18–20 depend from claim 17, and therefore, they are rejected under 35 U.S.C. § 112(a) for incorporating the new matter of their parent claims.
Claim Rejections – 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. § 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. § 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1–8 and 10–21 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 1
The amended language in the final step of Claim 1 is internally inconsistent and relies on circular logic, rendering the scope of the claim indeterminable to a person having ordinary skill in the art. The claim requires a model to “pre-digest . . . the input data, the analytics, and the association,” explicitly making those three elements the required inputs for the model to function. However, the claim simultaneously states that the “digestible data” output by this step comprises those exact same elements (“wherein the digestible data comprises the input data, the analytics, and the association”).
The claim language thus creates an unresolvable paradox: the model cannot calculate or output the input data, analytics, and association if it requires the input data, analytics, and association as prerequisite inputs to perform the “pre-digesting” step in the first place. Because the step relies on utilizing data it has not yet generated, the metes and bounds of the claim cannot be reasonably ascertained.
Claims 2–8 and 21
Claims 2–8 and 21 depend from claim 1, and are therefore rejected under 35 U.S.C. § 112(b) because they incorporate the indefinite matter of their parent claim by reference.
Claims 11–20
Independent claims 11 and 17 were amended to recite the same indefinite matter as claim 1, and are therefore rejected for all three of the same reasons.
Claims 12–16 depend from claim 11, and claims 18–20 depend from claim 17, and therefore, they are rejected under 35 U.S.C. § 112(b) for incorporating the indefinite matter of their parent claims.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 C.F.R. § 1.17(a)) pursuant to 37 C.F.R. § 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James K Trujillo can be reached at (571) 272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
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