DETAILED ACTION
This office action is in response to Applicant’s submission filed on 3/20/2024. Claims 1-10 are pending in the application of which Claims 1, and 6 are independent and have been examined.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. CN202410239569.7, filed on 3/1/2024.
Claim Rejections - 35 USC § 112
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 2, and 7 therefore claims 3, 8 respectively which depend therefrom; 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2, and 7, recites “… natural language processing on the assigned classification definition description message.”, which appears to be indefinite since it is not clear which assigned classification definition it is referring to.
Applicant is advised to review all claims for any potential antecedent basis issues.
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 1-10 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. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The flowchart in MPEP 2106, subsection III, is used to determine whether a claim satisfies the criteria for subject matter eligibility. For analysis purposes, one can follow the flowchart for subject matter eligibility.
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Step 1: The independent Claims is directed to statutory categories:
Step 1: Abstract Idea Groupings – MPEP 2106.04(a)(2)
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 1 is a system claim and directed to the machine or manufacture category of patentable subject matter.
Claim 6 is a method claim and directed to the process category of patentable subject matter.
Step 2A is a two-prong test.
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Step 2A, Prong One: Does the Claim recite a Judicially Recognized Exception? Abstract Idea? Are these Claims nevertheless considered Abstract as a Mathematical Concept (mathematical relationships, mathematical formulas or equations, mathematical calculations), Mental Process (concepts performed in the human mind (including an observation, evaluation, judgment, opinion), or Certain Methods of Organizing Human Activity (1-fundamental economic principles or practices (including hedging, insurance, mitigating risk), 2-commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), 3- managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and fall under the judicial exception to patentable subject matter?)
The broadest reasonable interpretation of steps in the claim limitations is that those steps fall within the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment, and opinion. See MPEP 2106.04(a)(2), subsection III.
Step 2A, Prong Two: Additional Elements that Integrate the Judicial Exception into a Practical Application? Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluating those additional elements to determine whether they integrate the exception into a practical application of the exception. “Integration into a practical application” requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Uses the considerations laid out by the Supreme Court and the Federal Circuit to evaluate whether the judicial exception is integrated into a practical application.
The rejected Claims do not include additional limitations that point to integration of the abstract idea into a practical application. Accordingly, the rejected Claims are directed to the abstract idea that they recite.
Claim 6 is a generic automation of a mental process since a human agent can adjust a search strategy, use a patent database via a user device, receiving a search strategy, extracting a patent classification, perform a natural language processing, analyze, translate, select, generate, evaluate, etc. Other than the mental process under the BRI, there is only the mention of a natural language processing (NLP), which is considered to be generic processor. NLP is not invented nor improved by the applicant, and as such it is considered a generic processor/computer due to lack of specificity. With such a generic extra element, one cannot identify anything that can be relied upon as an improvement. Prong 2 of step 2A, in the 101 analysis, asks whether the abstract idea is integrated into a practical application. The answer is no in this instance because there is no technological solution in the Claim that “integrates” the abstract idea. The Claim only suggests that the abstract idea be applied. It does not describe an application.
6. A method for adjusting a search strategy based on patent classification translation, comprising:
connecting a patent database and an operation-end device through a network, wherein the patent database stores one or more pieces of patent data, [This is merely amount to data gathering activity by a network connection to a database. Communication over network is considered as insignificant extra-solution activity. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014).]
the operation-end device comprises a non-transitory computer readable storage medium storing computer readable instructions, and a hardware processor configured to execute the computer readable instructions; [This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using a “computer readable storage medium”, and “processors” to perform all of the step recited in this claim. The use of a “computer readable storage medium”, and “processors” is recited at a high-level of generality (i.e., as a generic computer/processor device performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component See MPEP2106.05(f) Mere Instructions to Apply an Exception [R-10.2019].]
receiving a preliminary search strategy, and transmitting the preliminary search strategy to the patent database to search one of the pieces of patent data matching the preliminary search strategy, [Human can obtain a preliminary search strategy and use that to search a list for a match to find a patent that matches the search strategy. As such, this is considered a mental activity.]
extracting at least one patent classification from the searched pieces of patent data, by the operation-end device; [Human can obtain a patent classification from the identified patent. The additional element of device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
permitting the operation-end device to label the patent classification, query a classification definition description message corresponding to the labelled patent classification, and [Human can as well tag/label the patent classification, and subsequently extract the relevant classification definition from a list. The additional element of device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. As such, this is considered a mental activity.]
execute a natural language processing on the classification definition description message to perform a tokenization and sentence segmentation to generate one or more phrases; [Human can take a text/description and tokenize that into token and subsequently chunk the token into phrases. The additional element of natural language processing does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. As such, this is considered a mental activity.]
analyzing a technical field corresponding to the patent classification, and filtering out at least one phrase, from the one or more phrases, having a proper noun of the technical field to be at least one technical phrase, by the operation-end device; [Human can use the patent classification and identify the corresponding technical field it belongs to. Subsequently, uses the phrases obtained in the previous step, and extract/filter the corresponding technical phrase. The additional element of device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. As such, this is considered a mental activity.]
based on a translation table, translating the technical phrase to at least one idiomatic sentence, [Human can translate/transform the technical phrase into sentence. As such, this is considered a mental activity.]
selecting at least one of the at least one idiomatic sentence, and combining the selected idiomatic sentence with the preliminary search strategy to form an advanced search strategy, by the operation-end device; and [Human can take one of the obtained sentences and augment the preliminary search strategy by adding/combining the sentence with the preliminary search strategy. As such, this is considered a mental activity.]
performing a search on the pieces of patent data based on the advanced search strategy again, to filter at least one piece of accurate patent data, by the operation-end device. [Human can use the obtained/revised search strategy and perform another round of patent search. The additional element of device does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. As such, this is considered a mental activity.]
These limitations, under their broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “Natural Language processor”, “processors”, and “memory” nothing in the claim element precludes the step from practically being performed in the mind. 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 claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using a “Natural Language processor”, “processors”, and “memory” to perform all of the above-mentioned steps. The use of a “Natural Language processor”, and “processors” is recited at a high-level of generality (i.e., as a generic computer/processor device performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component See MPEP2106.05(f) Mere Instructions to Apply an Exception [R-10.2019].
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B: Search for Inventive Concept: Additional Element Do not amount to Significantly More: The limitations of " execute a natural language processing on the classification definition description message to perform a tokenization and sentence segmentation to generate one or more phrases,” is a well-understood, routine, and conventional machine components that and are being used for their well-understood, routine, and conventional and rather generic functions. Additionally, these limitations are expressed parenthetically and lack nexus to the claim language and as such are a separable and divisible mention to a machine. Merely reciting Natural Language processor without significantly more appears to be equivalent to a generic computer/processor to process a task that a human can process in their mind or with the aid of a paper/pen.
As mentioned, the only additional element to be considered, is the recitation of Natural Language processor (NLP). However, according to the as-filed specification disavows specificity of the NLP used which is attestation for NLP to be a generic model. Therefore, the cited additional element of NLP does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Accordingly, it is not sufficient to cause the Claim, as a whole, to amount to significantly/substantially more than the underlying abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using a “Natural Language processor”, “processors”, and “memory” to perform all of the above-mentioned steps. The use of a “Natural Language processor”, and “processors” is recited at a high-level of generality (i.e., as a generic computer/processor device performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component See MPEP2106.05(f) Mere Instructions to Apply an Exception [R-10.2019]. Also, in case of Natural Language processor, it is described in a broad manner such that it could include techniques that may be performed by a human, like a rule-based learning for example. The additional element of a “processor” and “memory, as cited in the as-filed specification appears to disclose a general-purpose computer component which are well-understood, routine and conventional elements. The use of an “computer and/or components of a computer” is recited at a high-level of generality (i.e., as a generic computer device performing a generic computer function of capturing input data, storing data and retrieval data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
With respect to independent Claim 1, the additional component is a processor and memory which are not sufficient to make the claim as a whole to amount to substantially more than the underlying abstract idea.
The dependent claims do not add limitations that would either integrate the recited abstract idea into a practical application or could help the Claim as a whole to amount to significantly more than the Abstract idea identified for the Independent Claim:
Claims 2 and 7 recite: “wherein the patent classification is labelled by at least one of an automatic manner and a manual manner, to execute the natural language processing on the assigned classification definition description message.” As mentioned above, Human, can carry out the steps such as labelling and the function related to the natural language processing. The additional element of natural language processor/processing does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claim is not patent eligible.
Claims 3 and 8 recite: “wherein the automatic manner of labelling the patent classification comprises collecting a cumulative quantity of the same patent classification and selecting the patent classification having the highest cumulative quantity to label.” Automation of labelling is a generic automation of a mental process since a human agent can perform the labelling as recited. Otherwise per MPEP 2106.05 (I) ( a ) mere automation of a manual process does not amount to an inventive concept- iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claim is not patent eligible.
Claims 4 and 9 recite: “ wherein the translation table is generated and updated by transmitting the technical phrase to a large language model, requesting the large language model to transmit back the corresponding idiomatic sentence, and generating and updating the translation table based on the technical phrase and the corresponding idiomatic sentence, wherein a user is permitted to freely label the technical phrase and input the idiomatic sentence corresponding to the labelled technical phrase to generate and update the translation table, wherein the translation table is permitted to be shared, and a plurality of translation tables generated and updated in different manners are permitted to be synchronized with each other.” As mentioned earlier transmitting and receiving to and from a database is insignificant extra activity. Using small or large language model does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. The rest of the claimed limitation can be performed by a human with a help of a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claim is not patent eligible.
Claims 5 and 10 recite: “wherein the idiomatic sentence and the preliminary search strategy are combined as the advanced search strategy through a logical operator and a field code of bibliographic data associated with the patent.” Combining a search string with another search string is a mental process and human can carry out such activity. Applying a logical operator is not an inventive concept and human can perform the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claim is not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Daniel B. Cook (US9798767B1) teaches Col. 14, ll. 8-20:” In addition, programming interfaces to the data stored as part of the IPIMS 610 (e.g., in the data repositories 615 and 616) can be available by standard means such as through C, C++, C#, and Java APIs; libraries for accessing files, databases, or other data repositories; through scripting languages such as XML; through query languages such as SQL; or through Web servers, FTP servers, or other types of servers providing access to stored data. The data repositories 615 and 616 may be implemented as one or more database systems, file systems, or any other method known in the art for storing such information, or any combination of the above, including implementation using distributed computing techniques.”, and Col. 2, ll.59-62:” the PRPSE determines predominant keywords found in the input text and locates [patent data matching] a set of patent related publications most closely related to these determined keywords as search results.”, and Col. 3, ll. 2-7:” In some examples, the PRPSE determines the set of patent related publications most closely related to these determined keywords both by full text searching of a corpus of patent related publications for all of the patent related publications that contain the predominant keywords ...”.
Frank C. Nicholas (US 11983206 B1) teaches Col. 4, ll. 44-56:” The forming the keywords and the identified synonyms into a search string 108 forms a search string which is used in the identifying database patent documents in a patent database 110. The search string can incorporate logic operators such as used in a Boolean search as desired for a particular application. In one embodiment, the method 100 can further include determining one or more patent classifications associated with the target patent document, and adding the patent classification to the search string prior to the identifying database patent documents 110 to limit the highlighting and the ranking to particular patent classification, i.e., the search is narrowed to a particular patent classification.”)
Lee et al. (US20200193153A1) teaches Par. 0138:” In an embodiment, multiple tokenizers may be trained using different training text. For example, tokenizers may be trained on text from different patent classifications. Then, when input is given to embodiment 540, one or more of the tokenizers may be selected to tokenize the inputs. For example, a tokenizer trained on the same patent classification as the input may be selected. In addition, when the input text segment and stored text segment are from different patent classifications, tokenizers trained on each respective patent classification may be used to tokenize each respective text segment.”
Bao Tran (US 20230252224 A1) teaches in Par. 0104:” …the process is as follows: First, a sentence tokenizer splits the text into set of sentences; and After tokenization, a representation for sentences is done …”, and Par. 0138:” FIG. 2H shows one implementation for generating technology or field specific long form text. The process is as follows:”, and Par. 0139:” First, the field needs to be identified. For example, the transformer training can be tailored to specific classifications such as the IPC code. In one embodiment, the process identifies the international patent classification (IPC) code using various ways: 1) ask user to indicate or select IPC with graphical user interface, or 2) auto detect IPC from contextual data”
Marie-Therese Lepeltier (US 20170075877 A1)teaches in Par. 0181:” … Diverse options can be provided, for example a contextual access to one or more lists of words associated with comparable patent classification entries, a display of definitions extracted from the corpus, etc.”, and Par. 0212:” … texts are continuously created according to one or more disclosed embodiments. Dictionaries, ontologies, vocabulary repositories associated with patent classification entries, and other words sources continuously evolve (terminology is not stable over time, new words appear and encompass new technical realities, like <<cloud computing>>) and such new words or phrases or definitions can be creation ingredients.”
Bansal et al. (US 20230376537 A1) teaches in Par. 0003:” Chunking is a process of extracting phrases from unstructured text and is a process of NLP used to identify parts of speech and short phrases of given sentence. Sentences of text are analyzed to identify the constituents (i.e., nouns, verbs, adjectives, etc. and groups thereof). Chunking segments and labels multi-token sequences to break down sentences or phrases into word-level tokenization and part-of-speech tagging. Similar to tokenization, which omits whitespace, chunking usually selects a subset of the tokens, and the pieces produced by a chunker do not overlap in the source text. Chunk patterns are the patterns of part-of-speech (POS) tags that define the kind of words that make up a chunk. Chunk patterns can be defined using normal regular expressions which are modified and designed to match the part-of-speech tags.”
Kapoor et al. (US20230004603A1) teaches in Par. 0037:” … Based on the text input and the ML model (trained by the training unit 208), the prediction unit 210 may be configured to predict the technology classification associated with the text. Additionally, the prediction unit 210 may be configured to retrieve one or more phrases from the text input. Additionally or alternatively, the prediction unit 210 may be configured to determine one or more additional phrases that correspond to the one or more phrases. For example, the prediction unit 210 may be configured to determine one or more synonyms of the one or more phrases as the one or more additional phrases. Thereafter, the prediction unit 210 may be configured to generate the structured search string based on the one or more phrases, the one or more additional phrases and the technology classification. In an alternative embodiment, the prediction unit 210 may be configured to transmit the one or more phrases, the one or more additional phrases and the technology classification to the computing device 104. In response to the transmission of the one or more phrases, the one or more additional phrases and the technology classification, the prediction unit 210 may receive a selection input from the user. ...”
Examiner's Note: Examiner has cited particular columns and line numbers and/or paragraph numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIOUSH AGAHI whose telephone number is (408)918-7689. The examiner can normally be reached Monday - Thursday and alternate Fridays, 7:30-4:30 PT.
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DARIOUSH AGAHI, P.E.
Primary Examiner
/DARIOUSH AGAHI/Primary Examiner, Art Unit 2656