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 .
Claim Objections
The Office objects to claims 1, 7, and 9 for having the following informalities:
Regarding claim 1, there is an extraneous conjunction (“and”) at the end of step (B). It should be removed, because step (B) is not the penultimate step in the list of steps recited in the claim.
Regarding claim 7, the claim lacks antecedent basis for “the opening with a single user input.”
Regarding claim 9, the tense of the word “comprises” is incorrect; it should be changed to the present continuous tense, “comprising.”
Appropriate correction is required.
Claim Rejections – 35 U.S.C. § 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.
I. Non-Statutory Subject Matter (Data or Software Per Se)
Claims 11–20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are, at best, directed to software per se, or, depending on the nature of the claimed “page,” even directed to data per se. Software and data per se do not fall within any of the four categories of subject matter (process, machine, manufacture, or composition of matter) listed in 35 U.S.C. § 101, and are therefore ineligible for patenting.
The broadest reasonable interpretation of a “patent search result page” that was merely generated by an artificial intelligence patent search engine includes a static webpage, e.g., written with a markup syntax such as HTML. The marked-up informational content of patent search results is nothing more than data per se. Moreover, even assuming for the sake of argument that the broadest reasonable interpretation of the claimed search result page included a dynamic webpage (e.g., driven by a scripting language such as JavaScript), such a dynamic webpage would be considered software per se. Note that the claims do not recite a computer programmed to execute an artificial intelligence patent search engine that generates the patent search results page. Instead, the claims are directed to the mere output of such a search engine.
Software and data per se do not fall within any of the four categories of subject matter (process, machine, manufacture, or composition of matter) listed in 35 U.S.C. § 101, and are therefore ineligible for patenting.
II. Ineligible Statutory Subject Matter (Abstract Ideas)
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception without significantly more, for the following reasons.
Claim 1
Claim 1 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. The claim recites the limitations of storing a sell sheet (or address), accessing a search engine to provide a search result page listing patent documents, activating a hyperlink, and displaying a sell sheet associated with a listed document. These limitations describe the concept of locating and presenting marketing materials (“sell sheets”) based on search parameters.
The limitations of storing, accessing, searching, and displaying marketing materials fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Specifically, the steps describe “advertising, marketing or sales activities or behaviors” (providing a sell sheet) and “managing personal behavior or relationships or interactions between people” (listing documents based on search parameters). See MPEP 2106.04(a)(2), subsection II. Additionally, the steps of accessing a search engine to locate documents and selecting a document to view information are concepts that can be practically performed in the human mind (e.g., searching a library catalog and retrieving a specific document), and thus also fall within the “Mental Processes” grouping of abstract ideas. See MPEP 2106.04(a)(2), subsection III. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. This judicial exception is not integrated into a practical application. The claim recites additional elements including an “electronic patent document database,” “another different electronic database,” the “internet,” a “web-based artificial intelligence patent search engine,” “search parameters,” a “first window,” a “first hyperlink,” a “single user input,” and a “second window.”
These additional elements are recited at a high level of generality as generic computer components and interface elements employed to perform their ordinary functions. The “web-based artificial intelligence patent search engine” is invoked merely as a tool to perform the abstract idea of searching and retrieving data. The claim does not provide any technical details regarding the specific structure or improvement of the artificial intelligence engine itself; rather, it uses the engine to perform the generic computer function of processing search parameters and listing results. Similarly, the “electronic databases,” “internet,” “windows,” and “hyperlinks” are generic computer and network components used for their standard purposes of storing, transmitting, and displaying data.
The claim does not reflect an improvement to the functioning of a computer or to any other technology or technical field. The use of a “single user input” to activate a hyperlink and open a second window describes an extra-solution activity and does not provide a specific improvement to computer capabilities. Therefore, these additional elements amount to no more than mere instructions to apply the judicial exception using generic computer components. See MPEP 2106.05(f). The limitations do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of the databases, internet, search engine, windows, and hyperlinks amount to no more than a mere description of the environment in which the abstract idea is intended to exist.
Descriptions of an invention’s field of use or its environment cannot provide an inventive concept. See MPEP 2106.05(h). Likewise, the steps of “storing” and “accessing” data amount to necessary data gathering and are considered insignificant extra-solution activity. See MPEP 2106.05(g). The recitation of “artificial intelligence” in the search engine, without specific technical details, represents a generic application of that technology to the abstract idea of searching and does not add significantly more. The claim is not patent eligible.
Claim 2
Claim 2 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 2 depends from claim 1 and recites the additional limitation that the display includes a “polychromatic drawing, polychromatic photograph, or three-dimensional polychromatic animation.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials (Certain Methods of Organizing Human Activity and Mental Processes). The additional limitation merely specifies the type of data or content being displayed (drawings, photos, animations). This describes the manipulation and presentation of intangible data, which falls within the abstract idea itself. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. The additional limitation of displaying specific visual media types (drawings, photos, animations) is merely a description of the content of the data contemplated as part of the abstract idea. Limitations regarding the non-functional content of information do not transform judicial exceptions into eligible inventions. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). The claim does not purport to improve the computer's ability to render graphics or animation; rather, it uses standard computer capabilities to present the abstract data in common visual formats. Thus, this limitation amounts to no more than mere instructions to apply the abstract idea using generic computer components. See MPEP 2106.05(f). Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The use of digital drawings, photographs, and 3D animations represents a description of informational content. Presenting information in these standard visual formats does not provide an inventive concept. The claim is not patent eligible.
Claim 3
Claim 3 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 3 depends from claim 1 and recites the additional limitation that the sell sheet is in the form of a “web page or a video clip.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. The limitation merely defines the format of the information being presented. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. The presentation of data as a “web page” or “video clip” describes the use of generic computer formats to display information. This limitation does not improve the functioning of the computer or the internet; it simply utilizes standard data structures to convey the abstract content. This amounts to extra-solution activity. Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The use of web pages and video clips to display content is extra-solution activity in the relevant field. These generic data formats do not provide an inventive concept. The claim is not patent eligible.
Claim 4
Claim 4 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 4 depends from claim 1 and recites the additional limitation that the content is provided by an “inventor, licensee, or owner.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. The limitation specifies the source of the information, which describes a method of organizing human activity (identifying the provider of marketing material). Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. Identifying the source of data (“provided by an inventor...”) constitutes insignificant extra-solution activity in the form of data gathering. See MPEP 2106.05(g). This limitation does not impose meaningful limits on the claim or improve any technology; it simply identifies where the abstract data originates. Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Identifying the source of data (“provided by an inventor...”) constitutes insignificant extra-solution activity in the form of data gathering. See MPEP 2106.05(g). This limitation does not impose meaningful limits on the claim or improve any technology; it simply identifies where the abstract data originates. The claim is not patent eligible.
Claim 5
Claim 5 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 5 depends from claim 1 and recites the additional limitation that the content is “incorporated into the artificial intelligence patent search engine's database.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. The incorporation of content into a database recites a generic computer function (storage) performed by a generic computer component (database). The claim does not provide technical details regarding how the database is structured or improved; it merely uses the database for its ordinary purpose of storing data. This amounts to mere instructions to apply the abstract idea using generic computer components. See MPEP 2106.05(f). Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Storing data in a database is a generic computer function that does not provide an inventive concept. The claim is not patent eligible.
Claim 6
Claim 6 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 6 depends from claim 5 and recites that the search engine is a “vision artificial patent search engine” and the content comprises “polychromatic images and videos.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. While the claim recites a “vision artificial patent search engine,” this element is invoked merely as a tool to perform the abstract function of searching and storing images/videos. The claim lacks specific technical details regarding how the vision AI operates or how it improves computer functionality. Merely generally linking the use of the judicial exception to a particular technological environment (vision AI) does not integrate the exception. See MPEP 2106.05(h). Furthermore, storing images and videos in a database is a generic computer function. Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed in Step 2A, the recitation of “vision artificial patent search engine” at a high level of generality represents a generic field of use or tool. The storage of images and videos is a generic computer function. These elements do not provide an inventive concept. The claim is not patent eligible.
Claim 7
Claim 7 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 7 depends from claim 1 and recites that the user input comprises “rapid mouse clicks or a mouse hover.” This claim at least recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. The use of “mouse clicks” or “mouse hovers” describes generic input activities using a standard computer peripheral (mouse). This limitation relates to the conventional manipulation of a graphical user interface and does not provide a specific improvement to the functioning of the computer or the interface itself. It amounts to insignificant, extra-solution activity. Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Mouse clicks and hovers are well-understood, routine, and conventional interactions in computing environments. These generic input methods do not provide an inventive concept. The claim is not patent eligible.
Claim 8
Claim 8 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 8 depends from claim 1 and recites selecting a secondary window based on “input location... and the type of single user input.” This claim recites the abstract idea identified in claim 1. Additionally, the step of selecting a window based on specific criteria (location/type) describes a rule-based selection process that can be practically performed in the human mind (Mental Process). Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. The selection of a specific window based on user input location and type describes standard context-sensitive graphical user interface logic. The claim does not describe a technical improvement to how the computer processes inputs or displays windows; rather, it uses existing GUI capabilities to facilitate the abstract idea of displaying information. This amounts to mere instructions to apply the exception on a computer. See MPEP 2106.05(f). Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The selection of a specific window based on user input location and type describes standard context-sensitive graphical user interface logic. The claim does not describe a technical improvement to how the computer processes inputs or displays windows; rather, it uses existing GUI capabilities to facilitate the abstract idea of displaying information. This amounts to mere instructions to apply the exception on a computer. See MPEP 2106.05(f). This does not provide an inventive concept. The claim is not patent eligible.
Claim 9
Claim 9 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 9 depends from claim 1 and recites “providing a secondary hyperlink within the sell sheet's patent document.” This claim recites the abstract idea identified in claim 1 regarding locating and presenting marketing materials. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. A “hyperlink” is a generic computer component used to navigate between data sources. The addition of a secondary hyperlink merely allows for further navigation within the abstract data. This does not improve computer functionality but simply uses standard internet tools to link information. This amounts to mere instructions to apply the abstract idea using generic computer components. See MPEP 2106.05(f). Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The use of hyperlinks is well-understood, routine, and conventional in the field of web-based technology. The Berkheimer evidence for this finding is available at MPEP § 2106.05(d) (explaining the holding in Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) that a web browser’s back and forward functionality—which buttons are, in fact, the same as links to webpages—is pre-established as well understood, routine and conventional). This does not provide an inventive concept. The claim is not patent eligible.
Claim 10
Claim 10 is rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A, Prong One. Claim 10 depends from claim 9 and recites that the patent document is in “PDF or other file format.” This claim recites the abstract idea identified in claim 1. Accordingly, the claim recites an abstract idea.
Step 2A, Prong Two. The judicial exception is not integrated into a practical application. Specifying that a document is a “PDF” or “other file format” merely dictates the electronic format of the abstract data. This is merely a description of data (in a known format), and does not improve the computer's ability to process files. This limitation amounts to mere instructions to apply the exception using generic computer components. See MPEP 2106.05(f). Accordingly, the claim is directed to the abstract idea.
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The PDF file format is well-understood, routine, and conventional activity. The Berkheimer evidence for this finding is that the Applicant’s specification mentions PDFs without even saying what the acronym stands for, indicating that the Applicant believes the “PDF” format “is so well-known that it need not be described in detail in the patent specification.” MPEP § 2106.05(d) (subsection (I.), item 2) (citing Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1377, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016)). This generic data format does not provide an inventive concept. The claim is not patent eligible.
Claims 11–20
Claims 11–20 are additionally rejected under 35 U.S.C. § 101, because, in addition to their lack of statutory subject matter, these claims recite the same judicial exception as corresponding claims 1–10, together with the same additional elements that fail to add a practical application or significantly more. The findings from claims 1–10 are hereby reincorporated by reference, as applied to their corresponding claims 11–20.
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 1–20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Specifically, the claims recite an “artificial intelligence patent search engine” (Claims 1, 11) that performs complex functions such as generating result pages based on user criteria and, notably, incorporating “layperson-friendly content” and “polychromatic images and videos” into its database.
The specification fails to disclose the specific algorithms, training models, or technical architecture required to construct an AI engine capable of these specific functions. Instead, the disclosure relies on generic hardware lists and references to existing third-party tools (e.g., Google Patents) which do not inherently possess the novel capabilities claimed.
The factors set forth in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir. 1988) demonstrate that undue experimentation would be required to practice the full scope of the claimed invention:
1. The Breadth of the Claims. The claimed “artificial intelligence” is extremely broad, covering any web-based “artificial intelligence patent search engine” capable of linking sell sheets and utilizing sell sheet content to improve search accuracy. The claims are not limited to a specific type of AI model (e.g., neural network, transformer, SVM) or a specific method of indexing. The scope encompasses any AI system that processes patent data and sell sheets, regardless of the underlying technology.
2. The Nature of the Invention. The invention involves Artificial Intelligence (AI) and Computer Vision software integrated into a search engine. This is a highly complex and sophisticated field. This is not a trivial lookup function; it requires advanced machine learning models for image recognition and semantic analysis.
3. The State of the Prior Art. While text-based patent search engines exist (e.g., Google Patents, cited in ¶ [0006]), the specific capability of a “artificial intelligence” in claims 1 and 11 that parses commercial sell sheets (marketing fliers, videos) to extract “layperson terms” and “polychromatic images” and retrain itself to improve search accuracy is not a standard feature of prior art engines. The specification admits this is a new capability intended to solve the problem of laypersons understanding B&W patent documents (¶ [0021]-[0022]).
4. The Level of Skill in the Art. A person of ordinary skill in the art (PHOSITA) would likely be a computer scientist with experience in information retrieval and machine learning. While this skill level is high, it is not infinite. A PHOSITA cannot generate complex, specific AI architectures from scratch based solely on functional descriptions of desired results.
5. The Level of Predictability in the Art. AI and machine learning are widely recognized as “unpredictable” arts. The performance of an AI model depends heavily on its specific architecture, training data sets, and hyperparameter tuning. Merely stating that an AI should perform a task (e.g., “continuously improve accuracy” using sell sheet images) does not predict how to achieve that result successfully.
6. The Amount of Direction Provided by the Specification. The specification provides minimal to no direction regarding the AI component. The specification lists generic hardware such as CPUs, GPUs, TPUs, and Raspberry Pi (¶ [0007], [0012]). However, it fails to disclose the software architecture. There is no disclosure of the AI algorithms, neural network structures (e.g., CNNs, RNNs), weighting logic, or training protocols used to process the “polychromatic sell sheets.”
Paragraph [0006] refers to existing engines (“such as USPTO or Google's patent search engine powered by AI”) as the operative engine. However, the claims require this engine to perform novel steps—specifically, incorporating sell sheet media into its database to refine search results. The specification does not explain how to modify these existing proprietary engines or how to build a new one to perform this integration.
7. The Existence of Working Examples. There are no working examples of the AI system. The drawings show user interfaces (screenshots of web pages), but do not show the backend AI processing. There is no evidence in the specification that the inventor has actually constructed or simulated the AI capability claimed.
8. The Quantity of Experimentation Necessary. Given the lack of algorithmic disclosure, a skilled artisan would be required to: (1) select and design an appropriate AI model (not disclosed); (2) curate a training dataset mapping “layperson” sell sheets to technical patent documents (not disclosed); (3) develop a computer vision system capable of extracting semantic meaning from “polychromatic images” and videos (not disclosed); and (4) integrate the foregoing into a search indexing algorithm.
This amounts to reinventing the core processor of the invention. Designing an AI search engine (or “Vision AI” system, in the case of claim 6) that can look at a marketing brochure and effectively index it against a patent database to “improve accuracy” is a research project in itself, not a routine implementation.
Therefore, because the specification provides only functional descriptions and generic hardware lists without disclosing the specific algorithmic or structural means to implement the “artificial intelligence patent search engine” and “vision AI” capabilities, the claims are not enabled. Practicing the invention would require undue experimentation.
Therefore, Claims 1–20 are rejected under 35 U.S.C. § 112(a).
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 8 and 11–20 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 8
Claim 8 contains multiple grammatical, syntactic, and antecedent basis issues. While grammatical issues usually do not rise to the level of indefiniteness, the combination of errors in claim 8 compound to render the scope of the claim indefinite. Specifically:
(1) the phrase “wherein the opening a secondary window wherein comprising a step of” does not make sense;
(2) claim 8 lacks antecedent basis for “the opening a secondary window,” because parent claim 1 refers to opening a second window, not a secondary window.
(3) claim 8 also lacks antecedent basis for “the selection of specific secondary window,” as no such concept was introduced prior to the use of the definite article for that step;
(4) claim 8 also lacks antecedent basis for “the type of single user input used to activate the secondary window.”
For the sake of compact prosecution, the Examiner will read and apply prior art to claim 8 as though it was drafted in a similar manner to claim 18.
Claims 11 and 12
The phrase “layman’s terms” in claims 11 and 12 is a relative term which renders the claim indefinite. The term “layman’s terms” is not defined by the claim, the specification does not provide a standard for ascertaining the degree of simplicity or generality necessary to fall within the scope of a non-expert’s understanding, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 13–20
Claims 12–20 depend from claim 11, and therefore incorporate the indefinite subject matter by reference.
Claim 19
The scope of claim 19 is unresolvable. Claim 19 appears to be directed to only the electronic polychromatic sell sheet of claim 11 (rather than the page that provides access thereto), yet also says that the electronic polychromatic sell sheet of claim 11 itself provides a secondary hyperlink to access itself, while also saying that the hyperlink is “provided within the polychromatic sell sheet’s patent document.”
Accordingly, claim 19 is indefinite.
Claim Rejections – 35 U.S.C. § 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 of this title, 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 1–20 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2008/0005103 A1 (hereafter “Ratcliffe”).
Claim 1
Ratcliffe teaches:
A method for displaying an electronic polychromatic sell sheet for an invention of a web patent document, the electronic polychromatic sell sheet selected from an electronic patent document database accessible via the internet through a web-based artificial intelligence patent search engine, comprising the following steps:
Ractliffe discloses a system 100 (see Ratcliffe ¶ 31), that, for reasons to be discussed herein, performs each and every step of the claimed method. “Under the principles of inherency, if a prior art device, in its normal and usual operation, would necessarily perform the method claimed, then the method claimed will be considered to be anticipated by the prior art device.” MPEP § 2111.02 (subsection I.).
At a high level, system 100 provides for users to search various databases for patents, and display an offer to license the patents together therewith. See Ratcliffe ¶¶ 35, 46, 91. Ratcliffe further discloses each of the elements mentioned in the preamble of this claim, but for the sake of clarity, Ratcliffe’s disclosure of each of those elements will be discussed together with each step of claim 1 that recites them.
(A) storing within the electronic patent document database or another different electronic database, either the electronic polychromatic sell sheet itself or a web address to said electronic polychromatic sell sheet;
“As seen in FIG. 1, the technology owner 170 may have his own server 175 for hosting his own website to display his own technology data 177 and licensing data 178 to market his technology,” and system 100 “pulls together technology owners 170 providing a central platform for technology data.” Ratcliffe ¶ 90.
(B) accessing the web-based artificial intelligence patent search engine by an end user
“In a preferred embodiment, the system 100 provides an internet based patent document, or other image and text based document, research system or website which allows and displays both image and text based information in a user friendly format.” Ratcliffe ¶ 34. This system falls within the scope of a “web-based artificial intelligence patent search engine” because (1) the system is an “internet-based . . . website,” (2) the system returns patent documents, and (3) the present application broadly defines “artificial intelligence” to include “USPTO or Google’s patent search engine powered by AI, that indexes patents and patent documents.” System 100 indeed indexes patents and patent documents. Ratcliffe ¶ 59.
to provide a patent search result page presented on a first window, the patent search result page further listing at least one patent document based on search parameters inputted by an end user accessing the web-based artificial intelligence patent search engine; and
As shown in the sequence of FIGS. 2–5, when the user accesses system 100 to search for patent documents, he or she inputs a search query (either simple or advanced) (Ratcliffe ¶¶ 35–36), and then clicks a link on one of the results (Ratcliffe ¶ 37), which causes the system 100 to display a full screen view of the chosen at least one patent search result. Ratcliffe ¶ 38.
(C) activating a first hyperlink by said end user with a single user input on the patent search result page to open a second window; and
“The user may select or click on the licensing window 507 to initiate the technology connection process as will be discussed in more detail below.” Ratcliffe ¶ 46.
(D) displaying an electronic polychromatic sell sheet through the second window, the displayed electronic polychromatic sell sheet associated with at least one of the listed patent documents on the patent search result page.
Clicking feature 507 “directs users to information about the technology as well as functionality to connect the user 190, 192 or technology seeker 180 with the technology owner 170,” Ratcliffe ¶ 91, which is illustrated in FIGS. 12–18 and subsequently discussed in further detail. Ratcliffe ¶ 92. In particular, “each technology within the system has its own technology page as can be seen in FIG. 14,” including “an about window 1420 with a place for an image or logo 1421,” “[a] full technology write up . . . in window 1431,” and “associated docs or links as listed in window 1460,” including “pdfs of the patents related to the technology 1461, published articles 1462, term sheets, or other information and links.” Ratcliffe ¶ 96.
Ratcliffe does not specify whether its technology page(s) is/are “polychromatic” (i.e., in color). However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to color Ratcliffe’s technology page(s), and/or the content therein, for four reasons.
First, as a matter of legal precedent, differences between claimed inventions and prior art that “relat[e] to ornamentation only” are considered to be prima facie obvious. See MPEP § 2144.04 (subsection I.) (citing In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). The claimed use of color, as compared to an otherwise identical prior art method and system that does not specify whether color is used or not, is a matter of ornamentation, and therefore, a prima facie obvious variation thereof.
Second, in a similar but separate vein, claim language that describes the content of printed matter “will not distinguish the claimed product from the prior art,” MPEP § 2112.02 (subsection III.), and “printed matter” includes content “directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data.” MPEP § 2111.05 (subsection III). Here, the only difference between the claimed invention and the prior art is
Third, notwithstanding the aesthetic design and printed matter rationales above (i.e., even if the “polychromatic” limitation were held to be functional), Ratcliffe at least suggests that one or more images stored in its system are polychromatic, by teaching that its system includes an image-searching feature, e.g., for “patent image to regular image or product image matches and regular image or product image to patent image matching,” Ratcliffe ¶ 143, including using an “HSV” image matching algorithm that “compares hue values of two images pixel-by-pixel and then calculates the difference between hue values.” Ratcliffe ¶ 142 (emphasis added). In color theory and art, “hue” refers to the pure color itself.
Finally, in addition to all of the foregoing, it is well-established that color drawings are sometimes essential to understanding the subject matter of a patent. See 37 C.F.R § 1.84(a)(2) (“color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application.”); see also IP5 Patent Harmonization Expert Panel, Allowable Features in Drawings page 5 (available at https://link.epo.org/ip5/PHEP) (acknowledging that the U.S., Chinese, and Korean patent offices make similar provisions for color drawings, and for similar reasons).
In view of all of the foregoing rationales, taken together with the findings set forth for each element of the claimed invention taught by Ratcliffe, the Office concludes that it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to color Ratcliffe’s technology page(s), and/or the content therein.
Claim 2
Ratcliffe teaches the method of claim 1
wherein displaying the electronic polychromatic sell sheet further displays one of the following visual displays from a group of visual displays consisting of polychromatic drawing, polychromatic photograph, or three-dimensional polychromatic animation.
“[E]ach technology within the system has its own technology page as can be seen in FIG. 14,” including “an about window 1420 with a place for an image or logo 1421” and “one or more images 1451 associated with it which can be uploaded to the system and displayed in window 1450.” Ratcliffe ¶ 96.
Claim 3
Ratcliffe teaches the method of claim 1
wherein the electronic polychromatic sell sheet is presented in the form of a web page or a video clip.
“FIG. 14 provides an illustrative screen capture 1400 of the technology owner's technology page.” Ratcliffe ¶ 96.
Claim 4
Ratcliffe teaches the method of claim 1
wherein the electronic polychromatic sell sheet’s content or web address is provided by an inventor, licensee, or owner of the patent document.
“FIGS. 13 and 14 illustrate screen captures 1300, 1400 for technology owners who want a personalized page and content. However, the system does not require technology owners to sign up or create personalized pages to be in the system. The system can also pull information on technology owners or have information entered.” Ratcliffe ¶ 99.
Claim 5
Ratcliffe teaches the method of claim 1
wherein the electronic polychromatic sell sheet’s content is incorporated into the artificial intelligence patent search engine’s database.
“The technology owner's server 175 may be connected via communication line 176 to one or more databases which may contain data such as a technology database 177 and/or licensing data 178 related to that owner's technology. All of some of this information may be replicated within the licensing content database 135 in communication with servers 105, 106.” Ratcliffe ¶ 33.
Claim 6
Ratcliffe teaches the method of claim 5
wherein the artificial intelligence patent search engine is a vision artificial patent search engine, and the content further comprises polychromatic images and videos from the sell sheet that are integrated into the database.
“In the preferred embodiment, the system conducts the image to image search by storing the images of the patent documents and selecting common points on each patent as the four corners of the image.” Ratcliffe ¶ 141. Such image searching may be performed using a color algorithm (e.g., “HSV,” in contrast to a “black/white” algorithm). See Ratcliffe ¶ 141.
Claim 7
Ratcliffe teaches the method of claim 1
wherein the opening with a single user input further comprises the step of triggering the single user input by one or more rapid mouse clicks or a mouse hover.
“The user may select or click on the licensing window 507 to initiate the technology connection process as will be discussed in more detail below.” Ratcliffe ¶ 46.
Claim 8
Ratcliffe teaches the method of claim 1
wherein the opening a secondary window wherein comprising a step of selecting the secondary window from a set of different secondary windows, the selection of specific secondary window is based on the single users input location on the patent search result page and the type of single user input used to activate the secondary window.
Clicking feature 507 “directs users to information about the technology as well as functionality to connect the user 190, 192 or technology seeker 180 with the technology owner 170,” Ratcliffe ¶ 91.
Claim 9
Ratcliffe teaches the method of claim 1 further comprises a step of
providing a secondary hyperlink within the sell sheet’s patent document.
Within technology page 1400 (FIG. 14), “[t]he technology may have associated docs or links as listed in window 1460.” Ratcliffe ¶ 96.
Claim 10
Ratcliffe teaches the method of claim 9,
wherein the patent document is in PDF or other file format.
“The docs or links may include pdfs of the patents related to the technology 1461.” Ratcliffe ¶ 96.
Claim 11
Ratcliffe teaches:
A patent search result page generated by an artificial intelligence patent search engine accessible via the world wide web, the artificial intelligence patent search engine having access to a database of patent documents, the patent search result page being generated based on search parameters or other criteria as provided by an end user in a first window, comprising:
Ractliffe discloses a system 100 (see Ratcliffe ¶ 31), that, for reasons to be discussed herein, generates the same patent search result page as claimed (or an obvious variant thereof). At a high level, system 100 provides for users to search various databases for patents, and display an offer to license the patents together therewith. See Ratcliffe ¶¶ 35, 46, 91. Ratcliffe further discloses each of the elements mentioned in the preamble of this claim, but for the sake of clarity, Ratcliffe’s disclosure of each of those elements will be discussed together with each step of claim 11 that recites them.
(A) a listing of one or more patent documents meeting the search parameters or criteria, with at least one listed patent document further comprising at least one hyperlink to the respective patent document's polychromatic sell sheet; and
As shown in the sequence of FIGS. 2–5, when the user accesses system 100 to search for patent documents, he or she inputs a search query (either simple or advanced) (Ratcliffe ¶¶ 35–36), and then clicks a link on one of the results (Ratcliffe ¶ 37), which causes the system 100 to display a full screen view of the chosen at least one patent search result. Ratcliffe ¶ 38.
(B) the hyperlink activation through a single user input causes a second window to open and display the polychromatic sell sheet further displaying an invention title, a description of the patent document in layman's terms and visually illustrating or otherwise presenting said patent document.
“The user may select or click on the licensing window 507 to initiate the technology connection process as will be discussed in more detail below.” Ratcliffe ¶ 46.
Clicking feature 507 “directs users to information about the technology as well as functionality to connect the user 190, 192 or technology seeker 180 with the technology owner 170,” Ratcliffe ¶ 91, which is illustrated in FIGS. 12–18 and subsequently discussed in further detail. Ratcliffe ¶ 92. In particular, “each technology within the system has its own technology page as can be seen in FIG. 14,” including “an about window 1420 with a place for an image or logo 1421,” “[a] full technology write up . . . in window 1431,” and “associated docs or links as listed in window 1460,” including “pdfs of the patents related to the technology 1461, published articles 1462, term sheets, or other information and links.” Ratcliffe ¶ 96.
Ratcliffe does not specify whether its technology page(s) is/are “polychromatic” (i.e., in color). However, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to color Ratcliffe’s technology page(s), and/or the content therein, for five reasons.
First, claim 11 is directed to the patent search result page, not the polychromatic sell sheet—which claim 11 recites as a separate page. Claim scope is not limited by claim language that fails to limit the invention to a particular structure. MPEP § 2111.04. Consequently, the prior art should not need to disclose any claim language that describes the separate sell sheet, since the sell sheet is not an element of the search results page.
Second, as a matter of legal precedent, differences between claimed inventions and prior art that “relat[e] to ornamentation only” are considered to be prima facie obvious. See MPEP § 2144.04 (subsection I.) (citing In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947)). The claimed use of color, as compared to an otherwise identical prior art method and system that does not specify whether color is used or not, is a matter of ornamentation, and therefore, a prima facie obvious variation thereof.
Third, in a similar but separate vein, claim language that describes the content of printed matter “will not distinguish the claimed product from the prior art,” MPEP § 2112.02 (subsection III.), and “printed matter” includes content “directed to conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data.” MPEP § 2111.05 (subsection III). Here, the only difference between the claimed invention and the prior art is
Fourth, notwithstanding the aesthetic design and printed matter rationales above (i.e., even if the “polychromatic” limitation were held to be functional), Ratcliffe at least suggests that one or more images stored in its system are polychromatic, by teaching that its system includes an image-searching feature, e.g., for “patent image to regular image or product image matches and regular image or product image to patent image matching,” Ratcliffe ¶ 143, including using an “HSV” image matching algorithm that “compares hue values of two images pixel-by-pixel and then calculates the difference between hue values.” Ratcliffe ¶ 142 (emphasis added). In color theory and art, “hue” refers to the pure color itself.
Finally, in addition to all of the foregoing, it is well-established that color drawings are sometimes essential to understanding the subject matter of a patent. See 37 C.F.R § 1.84(a)(2) (“color drawings may be necessary as the only practical medium by which to disclose the subject matter sought to be patented in a utility patent application.”); see also IP5 Patent Harmonization Expert Panel, Allowable Features in Drawings page 5 (available at https://link.epo.org/ip5/PHEP) (acknowledging that the U.S., Chinese, and Korean patent offices make similar provisions for color drawings, and for similar reasons).
Claim 12
Ratcliffe teaches a patent search result page of claim 11
wherein the polychromatic sell sheet further comprises polychromatic images, polychromatic pictures, polychromatic 3D animations, or polychromatic videos as accompanied by a description of the invention, the invention’s benefits, and operational details in layman's terms thereby explaining or illustrating the invention with polychromatic images and video.
“[E]ach technology within the system has its own technology page as can be seen in FIG. 14,” including “an about window 1420 with a place for an image or logo 1421” and “one or more images 1451 associated with it which can be uploaded to the system and displayed in window 1450.” Ratcliffe ¶ 96.
Claims 13–20
Claims 13–20 are hereby rejected over the same findings and rationale as provided above in corresponding claims 3–10.
Conclusion
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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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/ Primary Examiner, Art Unit 2151