DETAILED ACTION
This action is responsive to the application filed on 4/5/2024. The application claims the benefit of priority of U.S. Provisional Patent Application No. 63/458,055, filed on 4/7/2023, U.S. Provisional Patent Application No. 63/458,851, filed on 4/12/2023, U.S. Provisional Patent Application No. 63/461,310, filed on 4/23/2023, U.S. Provisional Patent Application No. 63/467,844, filed on 5/19/2023, and U.S. Provisional Patent Application No. 63/525,608, filed on 7/7/2023.
Claims 1-20 are pending in this application. Claims 1, 19, and 20 are independent claims.
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 .
Information Disclosure Statement
The information disclosure statements (IDS)s submitted on 4/5/2024, 8/26/2024, and 12/20/2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claims 1-18 are objected to because of the following informalities:
Replace computer readable with computer-readable for all occurrences in claims 1-18.
Claim 1, line 2, replace computer implementable with computer- implementable
Claim 2, line 7, replace to a word with to another word for proper antecedent basis
Claim 9, line 4, replace addition of a textual content with addition of textual content
Claim 9, line 6, replace includes with including
Claim 10, line 5, replace modification of a textual content with modification of textual content
Claim 11, line 4, replace add a subject matter with add subject matter
Claim 17, line 6, replace to a word with to another word for proper antecedent basis
Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claims 1, 19, and 20 recite “based on the modification to the prospective claim, analyzing the textual content of the description section to select a portion of the description section associated with the modification to the prospective claim” and “determining a suggested modification to the selected portion of the description section based on the modification to the prospective claim”, both of which can be recognized as elements that belong to the “mental processes” grouping of abstract ideas, but for the recitation of generic computer components (such as “non-transitory computer-readable medium” (for claim 1) and “one processing unit” (for claim 19)). These limitations recite analysis of description text in view of a modification in a prospective claim to select a portion or location within the text that is associated with the modification and determining a suggested modification to the selected portion based on the modification to the prospective claim, which merely combine elements of observations, evaluations, and judgements. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application because the above-indicated limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions. The recitation of generic computer components (such as “non-transitory computer-readable medium” (for claim 1) and “one processing unit” (for claim 19)) does not impose any meaningful limits on practicing the abstract idea. The additional elements of accessing a textual content of a prospective claim …, accessing a textual content of a description section of the …, receiving an indication of a modification to the prospective claim, and presenting the suggested modification to an individual amount to no more than adding insignificant extra-solution activity of mere data input/gathering and display that does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claims do 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 element of using a processing unit and/or a non-transitory computer-readable medium to perform the method steps described above amounts to no more than mere instructions to apply the exception using generic computer components. The data receipt/input and data display may be further considered well-understood, routine, and conventional in view of the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicating that mere collection or receipt of data over a network, as well as presenting information is a well-understood, routine, conventional function when it is claimed in a merely generic manner. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Neither can insignificant extra-solution activity. Thus, none of the additional elements as generically claimed in the independent claims is sufficient to amount to significantly more than the judicial exception.
Therefore, all of these additional limitations, taken alone or in combination, do not integrate the abstract idea into a practical application or recite significantly more that the abstract idea.
Thus, these independent claims are not patent eligible.
The dependent claims respectively recite additional limitations of identifying a first mathematical object in a particular mathematical space, the first mathematical object corresponds to a word in the modified prospective claim; identifying a second mathematical object in the particular mathematical space, the second mathematical object corresponds to a word in the textual content of the description section, (claim 2), analyzing the textual content of the description section and the modification to the prospective claim … to select the portion of the description section associated with the modification to the prospective claim (claim 3), analyzing the textual content of the description section to identify a segment of the description section including the noun; and selecting the portion of the description section associated with the modification to the prospective claim based on the identified segment of the description section that includes the noun, wherein the selected portion of the description section includes the identified segment of the description section that includes the noun (claim 4), analyzing the textual content of the description section to identify a segment of the description section corresponding to the particular limitation; and selecting the portion of the description section associated with the modification to the prospective claim based on the identified segment of the description section, wherein the selected portion of the description section includes the identified segment of the description section (claim 5), analyzing the modification to the prospective claim to identify a limitation added to the prospective claim (claim 9), analyzing the modification to the prospective claim to identify a limitation modified in the prospective claim (claim 10), analyzing the modification to the prospective claim and the textual input to determine the suggested modification to the selected portion of the description section (claim 11), analyzing the additional claim to determine a suggested addition to the description section (claim 14), analyzing the textual content of the description section and the additional claim to select a position in the description section for the suggested addition (claim 16), and identifying a first mathematical object in a particular mathematical space, the first mathematical object corresponds to a word in the additional claim; identifying a second mathematical object in the particular mathematical space, the second mathematical object corresponds to a word in the description section; and basing the selection of the position in the description section for the suggested addition on the first mathematical object and the second mathematical object (claim 17).
These above-indicated additional limitations also constitute steps of identifying correspondences between words and objects, analyzing textual content, textual input, and/or claim modifications, selecting positions within the sections, identifying certain segments based on certain observations and/or evaluations which fall within the “mental process” groupings of abstract ideas (including observations, evaluations, and judgments).
Claim 2 additionally recites calculating a function of the first mathematical object and the second mathematical object to obtain a third mathematical object in the particular mathematical space which constitutes a step involving a mathematical and falls within the “mathematical concepts” groupings of abstract ideas.
This judicial exception is not integrated into a practical application. Additional elements of “presenting an indication of the selected portion of the description section to the individual” (claim 6), “receiving from the individual a textual input in a natural language indicative of a desire of the individual to add a subject matter to the description section” (claim 11), receiving an indication of an addition of an additional claim to the prospective patent application and
presenting the suggested addition to the individual (claim 14) all amount to no more than adding insignificant extra-solution activity related to data receipt/input and data display. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Additional elements of “the third mathematical object corresponds to a particular word, the particular word is not included in any one of the modified prospective claim or the description section” (claim 2), “the prospective claim includes a noun, the modification to the prospective claim includes an addition of an adjective to the prospective claim adjacent to the noun” (claim 4), “the prospective claim includes a plurality of limitations, the modification to the prospective claim includes a modification to a particular limitation of the plurality of limitations” (claim 5), “the suggested modification includes an addition of at least one phrase to the selected portion of the description section, wherein the at least one phrase is not included in any one of the modified prospective claim or the description section” (claim 7), “the prospective claim includes a verb, the modification to the prospective claim includes an addition of an adverb to the prospective claim adjacent to the verb, the selected portion of the description section includes the verb but not the adverb, and the suggested modification to the selected portion of the description section includes an addition of the adverb to the selected portion of the description section adjacent to the verb” (claim 8), “the suggested modification to the selected portion of the description section includes an addition of a textual content supporting the limitation, the textual content supporting the limitation includes at least one phrase not included in the modified prospective claim” (claim 9), the suggested modification to the selected portion of the description section includes a modification of a textual content supporting the limitation (claim 10), the suggested modification includes an addition of the subject matter, and wherein the suggested modification includes an addition of at least one phrase to the selected portion of the description section, the at least one phrase is not included in any one of the modified prospective claim, the description section or the textual input (claim 11), presentation of the suggested modification to the individual enables the individual to reject the suggested modification (claim 12) and the presentation of the suggested modification to the individual enables the individual to alter the suggested modification (claim 13) are mere specifics related to the prospective claim, the selected portion of the description section, the suggested modification being made, and the presentation and they also do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore, the additional elements of “… using a machine learning model …” in claims 3 and 15 with no specific practical application merely links the use of an exception to a technological environment and still does not impose any meaningful limits on practicing the abstract idea.
The dependent claims do 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 “presenting” and “receiving” steps are further considered well-understood, routine, and conventional in view of the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicating that mere collection or receipt of data over a network, as well as presenting information, is a well-understood, routine, conventional function when it is claimed in a merely generic manner. Mere insignificant extra-solution activity cannot provide an inventive concept. Neither can the link of the use of the abstract idea to a certain technological environment. All of these additional elements as generically claimed are thus considered well-understood, routine, and conventional.
Therefore, these limitations, taken alone or in combination, do not integrate the abstract idea into a practical application or recite significantly more that the abstract idea.
Thus, these dependent claims are not patent eligible.
Examiner Comments
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5-7, 9, 10, 12, 13, 19, and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Booth, US PGPUB 2023/0289527 Al (hereinafter as Booth).
Regarding independent claim 1, Booth discloses a non-transitory computer readable medium storing a software program comprising data and computer-implementable instructions that when executed by at least one processor cause the at least one processor to perform operations [see e.g. [0117] indicating computer-readable medium storing software; see also [0121]-[0122]] for modifying description based on changes to claims [see [0061] indicating promulgating a change in a claim into the specifications as well as figs. 5A-5B and fig. 7], the operations comprising:
accessing a textual content of a prospective claim of a prospective patent application [note accessing the claims of a prospective patent application which are displayed in the user interface region 510 of figs. 5A and 5B as can be seen in [0066]-[0067] ];
accessing a textual content of a description section of the prospective patent application [note accessing the description of a prospective patent application which is displayed in the document region 505 of figs. 5A and 5B];
receiving an indication of a modification to the prospective claim [note e.g. in [0066] edits made by a user to claims in an interface and in [0067] creation of new language in a dependent claim by a user in the interface];
based on the modification to the prospective claim, analyzing the textual content of the description section to select a portion of the description section associated with the modification to the prospective claim [again, note in the left side of figs. 5A and 5B as well as [0066] and [0067] determining a corresponding portion of the description in the specification for propagating certain modifications to a claim; note the custom tags of the document that link particular claim language to descriptions, which is a form of textual content analysis];
determining a suggested modification to the selected portion of the description section based on the modification to the prospective claim; and presenting the suggested modification to an individual [note in figs. 5A-5B, especially the left side, and in [0066]-[0067], the presentation, in the interface, of modifications made to the corresponding portion of the description in the specification, such as the edited word in sentence portion 530 and the inserted new paragraph 550].
Regarding claim 3, the rejection of independent claim 1 is incorporated. Booth further discloses analyzing the textual content of the description section and the modification to the prospective claim using a machine learning model to select the portion of the description section associated with the modification to the prospective claim [see e.g. in [0089]-[0091] the NLP analysis (which uses a ML model) involving identification of text corresponding to claim phrases in different parts of the specification (for replacing/modifying that text) as claims are edited; note that the NLP server identifies similarities between prospective claim phrases and the specification text, i.e. uses both as input; note in [0032] extracting text from the claim and identifying tokens accordingly].
Regarding claim 5, the rejection of independent claim 1 is incorporated. Booth further discloses that the prospective claim includes a plurality of limitations [note in fig. 7, exemplary claim 1 in 705 including a plurality of limitations], the modification to the prospective claim includes a modification to a particular limitation of the plurality of limitations [note the modification described in [0066]-[0067] which would be in a particular limitation of any plurality of limitations of a claim being modified], and the operations further comprise:
analyzing the textual content of the description section to identify a segment of the description section corresponding to the particular limitation; and selecting the portion of the description section associated with the modification to the prospective claim based on the identified segment of the description section, wherein the selected portion of the description section includes the identified segment of the description section [again, note in the left side of figs. 5A and 5B as well as [0066] and [0067] determining a corresponding portion of the description in the specification for propagating certain modifications to a claim; note the custom tags of the document that link particular claim language to descriptions, which is a form of textual content analysis].
Regarding claim 6, the rejection of independent claim 1 is incorporated. Booth further discloses presenting an indication of the selected portion of the description section to the individual [see again the left side of fig. 5B and note presenting paragraph numbers within 530 and 550 indicating portions of the description section selected for modifications].
Regarding claim 7, the rejection of independent claim 1 is incorporated. Booth further discloses that the suggested modification includes an addition of at least one phrase to the selected portion of the description section, wherein the at least one phrase is not included in any one of the modified prospective claim or the description section [see e.g. fig. 7 and note limitation 714 added in 705 and the suggested modification 724 which includes the phrase “In some aspects” which is not included in the modified claim or the description section; see also [0076]].
Regarding claim 9, the rejection of independent claim 1 is incorporated. Booth further discloses analyzing the modification to the prospective claim to identify a limitation added to the prospective claim, and that the suggested modification to the selected portion of the description section includes an addition of a textual content supporting the limitation, the textual content supporting the limitation includes at least one phrase not included in the modified prospective claim [see e.g. fig. 7 and note limitation 714 added in 705 and the suggested modification to the selected portion of the description section 724 which includes the phrase “In some aspects” which is not included in the modified claim; see also [0076]].
Regarding claim 10, the rejection of independent claim 1 is incorporated. Booth further discloses analyzing the modification to the prospective claim to identify a limitation modified in the prospective claim, and that the suggested modification to the selected portion of the description section includes a modification of textual content supporting the limitation [note in [0066] and by comparing fig. 5A and 5B, the modification to a word (paragraph changed to paragraphs) in a limitation in the claim in 520 and the corresponding modification of textual content supporting that limitation in 530].
Regarding claim 12, the rejection of independent claim 1 is incorporated. Booth further discloses that the presentation of the suggested modification to the individual enables the individual to reject the suggested modification [note in [0069] that indicates highlights to allow a user to visually see changes that need attention and address any issues; note that the document region 505 of the application where suggested modifications are presented is analogous to 305 of fig. 3 which has editing controls 300 for the user to make any edits to the suggested modifications including deletion; see also [0065] and [0077] indicating allowing a user to alter/edit the sentence portions; Examiner notes that deletion is a form of altering indicating rejecting a modification; note also in [0074] allowing a user to approve a suggested modification of deletion and note that if the user does not approve, he is rejecting the suggestion].
Regarding claim 13, the rejection of independent claim 1 is incorporated. Booth further discloses that the presentation of the suggested modification to the individual enables the individual to alter the suggested modification [note in [0069] that indicates highlights to allow a user to visually see changes that need attention and address any issues; note that the document region 505 of the application where suggested modifications are presented is analogous to 305 of fig. 3 which has editing controls 300 for the user to make any edits to the suggested modifications; see also [0065] and [0077] indicating allowing a user to alter/edit the sentence portions].
Regarding independent claims 19 and 20, they are rejected, analogous to the rejection of claim 1.
For claim 19, Booth also discloses a system comprising at least one processing unit [see e.g. fig. 13 and note the processor 1310] configured to perform the operations recited in claim 1. Refer to the portions cited for the rejection of claim 1.
For claim 20, Booth also discloses a method [see e.g. fig. 11 and [0001]] for modifying description based on changes to claims [see [0061] indicating promulgating a change in a claim into the specifications as well as figs. 5A-5B and fig. 7], the method comprising the operations recited in claim 1. Refer to the portions cited for the rejection of claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Booth in view of Lepeltier, US PGPUB 2017 /0075877 Al (hereinafter as Lepeltier).
Regarding claim 4, the rejection of independent claim 1 is incorporated. Booth further teaches analyzing the textual content of the description section to identify a segment of the description section including a phrase corresponding to an identified phrase; and selecting the portion of the description section associated with the modification to the prospective claim based on the identified segment of the description section that includes the phrase corresponding to the identified phrase, wherein the selected portion of the description section includes the identified segment of the description section that includes the phrase corresponding to the identified phrase [again, note in the left side of figs. 5A and 5B as well as [0066] and [0067] determining a corresponding portion of the description in the specification for propagating certain modifications to a claim; note the custom tags of the document that link particular claim language to descriptions, which is a form of textual content analysis; further note in [0091] identifying phrases corresponding to a certain phrase in different parts of the specifications].
Booth does not explicitly teach that the prospective claim includes a noun, the modification to the prospective claim includes an addition of an adjective to the prospective claim adjacent to the noun. Neither does it teach that the phrase identified is the noun nor that the selected portion of the description section includes the identified segment of the description section that includes the noun.
Lepeltier teaches a prospective claim that includes a noun and a modification to the prospective claim that includes an addition of an adjective to the prospective claim adjacent to the noun [note towards the bottom of [0181] the addition of an adjective before a noun in a prospective claim ].
Lepeltier further teaches identifying the noun and a selected portion of the description section to be modified that includes a segment of the description section that includes the noun [note towards the bottom of [0181] the corresponding modification of the associated portion of the specification (the one which includes the noun)].
It would have been obvious to one of ordinary skill in the art having the teachings of the Booth and Lepeltier, before the effective filing date of the claimed invention, to modify Booth’s framework for suggesting and presenting modifications within a patent application preparation by explicitly specifying that the prospective claim includes a noun, the modification to the prospective claim includes an addition of an adjective to the prospective claim adjacent to the noun, that the operations include analyzing the textual content of the description section to identify a segment of the description section including the noun; and selecting the portion of the description section associated with the modification to the prospective claim based on the identified segment of the description section that includes the noun, wherein the selected portion of the description section includes the identified segment of the description section that includes the noun, as per the teachings of Lepeltier. The motivation for this obvious combination of teachings would be to ensure consistency, as suggested by Lepeltier [see e.g. [0100]].
Regarding claim 8, the rejection of independent claim 1 is incorporated. Booth does not explicitly teach that the prospective claim includes a verb, the modification to the prospective claim includes an addition of an adverb to the prospective claim adjacent to the verb, the selected portion of the description section includes the verb but not the adverb, and the suggested modification to the selected portion of the description section includes an addition of the adverb to the selected portion of the description section adjacent to the verb.
Lepeltier teaches a prospective claim that includes a noun and a modification to the prospective claim that includes an addition of an adjective to the prospective claim adjacent to the noun [note towards the bottom of [0181] the addition of an adjective before a noun in a prospective claim ].
Lepeltier further teaches a selected portion of the description section to be modified that includes the noun but not the adjective, and a suggested modification to the selected portion of the description section that includes an addition of the adjective to the selected portion of the description section adjacent to the noun [note towards the bottom of [0181] the corresponding modification of the associated portion of the specification (the one which includes the noun) by adding the adjective to occurrences of the noun in the specification].
It would have been obvious to one of ordinary skill in the art having the teachings of the Booth and Lepeltier, before the effective filing date of the claimed invention, to modify Booth’s framework for suggesting and presenting modifications within a patent application preparation by explicitly specifying that the prospective claim includes a noun, the modification to the prospective claim includes an addition of an adjective to the prospective claim adjacent to the noun, the selected portion of the description section includes the noun but not the adjective, and the suggested modification to the selected portion of the description section includes an addition of the adjective to the selected portion of the description section adjacent to the noun, as per the teachings of Lepeltier. The motivation for this obvious combination of teachings would be to ensure consistency, as suggested by Lepeltier [see e.g. [0100]].
Lepeltier further teaches parts of speech that are verbs and adverbs [see e.g. [0084]].
It would have been further obvious to a person of ordinary skill in the art, having the teachings of Booth and Lepeltier, before the effective filing date of the claimed invention, to respectively substitute the verbs and adverbs for the nouns and adjectives taught by Lepeltier, to reach the recited limitation. Because Lepeltier teaches the different parts of speech and an analogous modification for the case of modifying a noun, one of ordinary skill in the art would have been able to make a simple substitution of one known form of combination of parts of speech for another to generate the predictive result of lingual consistency across different parts of a body of writing including modifying a verb. See MPEP 2143 I B.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Booth in view of Tran, US PGPUB 2023/0252224 Al (hereinafter as Tran).
Regarding claim 11, the rejection of independent claim 1 is incorporated. Booth further teaches analyzing the modification to the prospective claim to determine the suggested modification to the selected portion of the description section, wherein the suggested modification includes an addition of subject matter, and wherein the suggested modification includes an addition of at least one phrase to the selected portion of the description section, the at least one phrase is not included in the modified prospective claim or the description section [see e.g. fig. 7 and note limitation 714 added in 705 and the suggested modification 724 that is determined based on the modification to the claim and that includes the phrase “In some aspects” which is not included in the modified claim or the description section; see also [0076]].
Booth, however, does not explicitly teach receiving from the individual a textual input in a natural language indicative of a desire of the individual to add a subject matter to the description section. Neither does it teach that the analysis to determine the suggested modification includes the textual input nor that the at least one added phrase is not included in the textual input.
Tran teaches receiving from an individual a textual input in a natural language indicative of a desire of the individual to add subject matter to a description section of a prospective patent application [note in [0446] the example of a patent drafting process; note in [0448] the prompting using textual input resulting in generating an expanded description as indicated in [0452]; note from [0434] that the user utilizes the prompting feature; and note from [0438] the ability to include a goal in the prompt which can be adding subject matter, as per [0452]].
Tran further teaches determining a suggested modification including analyzing the textual input [see e.g. [0056] indicating suggesting paragraphs to add to the detailed description utilizing textual input from the user].
It would have been obvious to one of ordinary skill in the art having the teachings of the Booth and Tran, before the effective filing date of the claimed invention, to apply the teachings of Tran of receiving from an individual a textual input in a natural language indicative of a desire of the individual to add subject matter to a description section of a prospective patent application and utilizing the textual input to determine a suggested modification to Booth’s framework for suggesting and presenting modifications within a patent application preparation, so that the suggested modification is determined based on analyzing the modification to the prospective claim and the textual input, and to further specify that the at least one phrase is not included in any one of the modified prospective claim, the description section or the textual input, by applying the exclusion taught by Booth to the additional input taught by Tran. The motivation for this obvious combination of teachings would be to enable producing output that increases control and decreases bias by directing the model via user prompting enabling including a goal and making the patent drafting process more efficient and user -friendly, as suggested by Tran [see e.g. [0434]-[0435], [0438], and [0446]].
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Booth in view of Dugan et al., US PGPUB 2013/0198092 Al (hereinafter as Dugan).
Regarding claim 14, the rejection of independent claim 1 is incorporated. Booth further teaches (as in the rejection of claim 1) presenting a suggested addition to the individual [note in figs. 5A-5B, especially the left side, and in [0066]-[0067], the presentation, in the interface, of additions made to the corresponding portion of the description in the specification, such as the inserted new paragraph 550].
Booth, however, does not explicitly teach: receiving an indication of an addition of an additional claim to the prospective patent application; and analyzing the additional claim to determine a suggested addition to the description section.
Dugan teaches receiving an indication of an addition of an additional claim to a prospective patent application; and analyzing the additional claim to determine a suggested addition to the description section [see [0112] indicating the addition of a new claim and regenerating written description portions; see also [0202]-[0203] and fig. 5 as well as [0099] describing the propagation of changes from edited claims to written description portions which indicates analyzing the claim modifications including any new claims].
It would have been obvious to one of ordinary skill in the art having the teachings of the Booth and Dugan, before the effective filing date of the claimed invention, to apply the teachings of Dugan of receiving an indication of an addition of an additional claim to a prospective patent application; and analyzing the additional claim to determine a suggested addition to the description section to Booth’s framework for suggesting and presenting modifications within a patent application preparation. The motivation for this obvious combination of teachings would be to extend Booth’s framework to include the addition of new claims and accordingly generating/modifying description portions thus reducing drafting time and errors, as suggested by Dugan [see e.g. [0199], [0112], and [0099]].
Regarding claim 15, the rejection of claim 14 is incorporated. The previously combined art teaches using a machine learning model to analyze the additional claim to determine the suggested addition to the description section [Booth teaches e.g. in [0030] the use of an NLP server (which involves the use of a machine learning model) to analyze claim language to determine suggested additions to the specification; Dugan further teaches in [0112], [0202]-[0203] the use of an additional claim to determine modifications to the written description]. See the rejection of claim 14 for motivations to combine the cited art.
Regarding claim 16, the rejection of claim 14 is incorporated. The previously combined art teaches analyzing the textual content of the description section and the additional claim to select a position in the description section for the suggested addition [again, note in the left side of figs. 5A and 5B as well as [0066] and [0067] of Booth determining a corresponding portion of the description in the specification for propagating certain modifications to a claim; note the custom tags of the document that link particular claim language to descriptions, which is a form of textual content analysis; note in [0099] of Dugan the use of edited claims to propagate changes to relevant locations/portions of the written description; further note in [0112], [0202]-[0203] of Dugan the additional claim as a form of edited claims]. See the rejection of claim 14 for motivations to combine the cited art.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Booth in view of Dugan, as applied to claim 16, and further in view of Hu et al., US Patent No. 9,613,134 B2 (hereinafter as Hu).
Regarding claim 17, the rejection of claim 16 is incorporated. The previously combined art teaches identifying a phrase in the additional claim; identifying another phrase in the written description corresponding to the initial phrase; and basing the selection of the position in the description section for the suggested addition on the identified phrases [again, note in the left side of figs. 5A and 5B as well as [0066] and [0067] of Booth determining a corresponding portion of the description in the specification for propagating certain modifications to a claim; note the custom tags of the document that link particular claim language to descriptions, which is a form of textual content analysis; further note in [0089]-[0091] of Booth identifying other phrases corresponding to a certain phrase in different parts of the specifications based on some correspondence metric, i.e. basing the selection of the position for modifications in the description section on the correspondence identified between the phrases; Dugan teaches in [0112], [0202]-[0203] the use of an additional claim to determine suggested modifications to the written description]. See the rejection of claim 14 for motivations to combine the cited art.
The previously combined art, however, does not explicitly teach: identifying a first mathematical object in a particular mathematical space, the first mathematical object corresponds to a word in the additional claim; identifying a second mathematical object in the particular mathematical space, the second mathematical object corresponds to another word in the description section; and basing the selection of the position in the description section for the suggested addition on the first mathematical object and the second mathematical object.
Hu teaches identifying first and second mathematical objects, both in a particular mathematical space, corresponding to first and second words/phrases and identifying the correspondence/matching between them [note in col. 10, lines 25-37 the listing of words that are identified as matching in view of their correspondence with mathematical objects in a mathematical space of comparative operators, as described in col. 4, lines 30-34; see also col. 6, lines 15-20 and 25-27].
It would have been obvious to one of ordinary skill in the art having the teachings of Booth, Dugan, and Hu before the effective filing date of the claimed invention to substitute the correspondence/matching criteria applied to different words corresponding to different mathematical objects in a particular common mathematical space taught by Hu for the correspondence/matching criteria applied to generic phrases taught by Booth to reach the recited limitations. Because Booth teaches the matching criteria applied to selecting a position in the description section for applying modifications in corresponding phrases in claims but doesn’t specifically discuss matching criteria for words corresponding to mathematical objects in a particular common mathematical space, one of ordinary skill in the art would have been able to make a simple substitution of one known form of matching for another to generate the predictive result of enabling knowledge-based matching applied to phrases describing mathematical operators in natural language text, as suggested by Hu [see e.g. col. 14, lines 21-23 and col. 2, lines 38-41], which would extend Booth’s framework for suggesting and presenting modifications within a patent application preparation to phrases/words describing mathematical operators in natural language text. See MPEP 2143 I B.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Booth in view of Mishra et al., US Patent No. 10,977,439 B2 (hereinafter as Mishra).
Regarding claim 18, the rejection of independent claim 1 is incorporated. Booth does not explicitly teach receiving an indication of a particular style; and further basing the determining the suggested modification to the selected portion of the description section on the particular style.
Mishra teaches receiving an indication of a particular style; and basing a determination of a suggested modification to a selected portion of a text section on the particular style [see fig. 4 and note generated output text based on a selected set of style specifications].
It would have been obvious to one of ordinary skill in the art having the teachings of the Booth and Mishra, before the effective filing date of the claimed invention, to apply the teachings of Mishra of receiving an indication of a particular style and basing a determination of a suggested modification to a selected portion of a text section on the particular style to the selected portion of the description section taught by Booth. The motivation for this obvious combination of teachings would be to enable controllable style-based text modifications, as suggested by Mishra [see e.g. col. 1, lines 25-26].
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101 as well as the objection for improper antecedent basis set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Examiner notes from the cited prior art:
US Patent No. 10,713,443 B1, Knight et al., which teaches inserting sentences in draft patent applications including support for previously unseen claim features [see e.g. fig. 2].
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/MARIA S AYAD/Primary Examiner, Art Unit 2172