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 .
Status of Claims
This office action is in response to the amendments and arguments submitted 25 June 2026.
Claims 2 through 21 remain, claims 2, 9, and 16 have been amended and the claims have been examined.
This office action is FINAL.
Response to Arguments
112(a) Rejections
Applicants’ arguments, filed 12/19/2025, with respect to the rejection of claims 2-21 under 35 U.S.C. § 112(a) have been fully considered and are persuasive. The 35 U.S.C. § 112(a) rejection is Withdrawn.
101 Rejections
Applicants’ arguments filed with respect to the rejection of the claims under 35 USC 101 have been fully considered and are not persuasive.
With respect to the rejection under 35 U.S.C. § 101, the Applicants argument asserting that the subject matter eligibility rejection is moot, is respectfully not persuasive. The claim amendments do not alter the claim language in a manner that alters the scope of the 35 U.S.C. § 101 rejection. That is, the amendments add the reconciling, identifying, and highlighting limitations that are further identified within the same abstract ideas categories, without amending the identified additional elements. The claims continue to place no limits on how the results based claims are performed.
The Examiner takes note of the applicants’ arguments, on pages 11-13, asserting that the claims perform specific “operations” that utilize a data structure. Said normalized data structure, i.e. a database, is an additional element used as a tool to implement the abstract ideas. The specification does not reveal advances to databases, such that it is not indicative of integration of the abstract ideas into a practical application, nor does the database amount to significantly more than the abstract ideas. The “specific operations that produce and act on the” database are identified as abstract ideas, and the general-purpose computing structures are the additional elements. Any sending, receiving, or displaying features are additional elements that are not revealed, in the specification, as advances to their fields of use in sending, receiving, and displaying data, such that they are not indicative of practical applications nor do they amount to significantly more, either.
It is factual that the claims do not clarify how these generalized business “operations” are performed. Instead, the claims are focused on the non-functional descriptive information, i.e. data characterizations, manipulated by “operations” to functionally reach the characterized data outcomes. These operations may be performed in any manner that is reasonably and broadly interpretable to result in the characterized data outcomes. That is, the limitations reciting transforming by: identifying, mapping, resolving, reconciling, identifying, performing by: retrieving, parsing by extracting, comparing, identifying, analyzing, generating, quantifying, or creating by: generating based on quantification, each encompass any conceivable process or modality of performance without constraining, protecting, or restricting the functions to any particular “operation” that returns a data with the same characterizations.
The applicants’ arguments, on pages 12–13, are unpersuasive. Applicant asserts that the ordered combination of specific operations amounts to significantly more than the abstract ideas. However, the underlying claim limitations—specifically, transforming two databases into a single database and performing keyword analyses filtered by jurisdiction—are themselves abstract ideas. Under MPEP 2106.04 and 2106.05, an ordered combination of abstract ideas cannot amount to "significantly more" than the recited abstract ideas, i.e. the same ordered combination of abstract ideas.
The claims also do not specify any mechanisms for performing the claim limitations that amount to more than “apply it,” i.e. off the shelf general-purpose computing structures that are applied to perform the abstract idea based “operations.” The specification does not reveal advances to these general-purpose computing structures. Hence there are no additional elements that are indicative of a practical application. Re-examining the same limitations under Step 2B, results in the same findings, for the same reasons, and therefore the general purpose computing structures do not amount to significantly more than the abstract ideas.
Please find the updated 35 U.S.C. § 101 rejection below to reflect the amendments.
The Examiner has re-examined the amended claims and the 35 U.S.C. § 101 rejection is Maintained.
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 2-21 are rejected under 35 U.S.C. §101 because the claimed invention is directed to judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Independent Claims
Step 2A Prong 1: Claims 2, 9, and 16 recite: generating analytics including quantification of unique keywords overlap, generating a portfolio strength metric to quantify coverage effectiveness based on data and analytics, which are abstract ideas in the category of mathematical concepts in the sub-categories of both mathematical relationships and mathematical calculations (see MPEP 2106.04(a)(2)(I)). Mathematical relationships are recited because they are identified by the relationships between a solution and the calculations for deriving the solution, i.e. organizing information, and manipulating information through mathematical correlations. Mathematical calculations are recited because calculations are required to determine the analyses, metrics, analytics, and quantifications.
The claims recite: transforming data fields for the first and second data into common fields by: identifying common fields, mapping disparate fields, resolving field inconsistencies using predetermined rules, and reconciling date and name formats, identifying countries with one issued patent or one filed patent application, highlighting identified country/ies on map, automatically performing keyword analysis by: retrieving text data, parsing data from matter and prior art, for each country, extracting keywords from matter, extracting keywords from prior art by country, comparing keywords of matter to prior art, identifying unique keywords from matter data that are not in prior art data, creating a first portfolio including data which are in the category of certain methods of organizing human activity, in the subcategory of managing personal behavior or relationships or interactions between people because the claims perform the tasks historically performed by a patent examiner or other patent IP professional in analyzing patents and prior art for patentability, that incorporate the business relations and behaviors between IP professionals and inventors.
These behaviors of individuals or between people include following rules or instructions to identify related prior art or patentable subject matter according to the laws and rules for the particular jurisdiction. This is similar in nature to MPEP 2016.04 a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) because the claims perform the same mental tasks that a patent/IP professional would follow when evaluating any patent application for patentability, including matching data fields from disparate data sources, analyzing the data for keywords/keyphrases, determining that the instant matter has keywords/phrases that are unique, creating a portfolio of related patents and applications, all filtered by a particular jurisdiction/country.
The instant invention claims automate the historically human performed tasks of analyzing database data to normalize database fields across disparate data sources, analyzing intellectual property according to metrics and analytics to make determinations of patentability based on parsing and comparing text to identify unique keywords over prior art for different countries and from different IP databases, and creating portfolios of related art to store the findings, leading to assessments which are also mental processes, but for the general purpose computing structures, i.e. processor, databases, and graphical user interface in claims 2, 9, and 16, memory in claim 9, and non-transitory machine readable medium in claim 16.
These findings are supported at least in the instant specification ¶’s [0016-0019] which describe the patenting lifecycle performed by the instant invention. ¶ [0017] discloses: “At each stage, one or more parties may determine the best course of action to take with respect to the invention,” describing the tasks performed by this instant invention as a hands-on process, where the disclosure and claims provide an interface for humans to make business decisions based on automations of historically human performed tasks. The disclosure further supports these findings in ¶ [0018] “a full picture of a patent portfolio can be viewed and understood with greater clarity from both a quantitative and qualitative sense,” such that the automations require human input, analyses, and determinations as this invention eases the load of a patent examiner or IP professional.
Merely automating tasks that have been performed by a human are still considered mental processes because the claims are still performing observations, evaluations, judgments, and opinions, performed historically by humans, such that the tasks recited above are also in the abstract idea categories of mental processes. The instant application specification ¶ [0019] discloses “a patent portfolio management system … may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life,” disclosing that this instant application performs these mental processes to assist a human in making decisions involved in the patenting process.
The claims recite: receiving first and second data, displaying data on a map, highlighting data on a map according to location found in data, receiving a country selection, receiving analytics data, displaying received data, filtering, sorting, or otherwise organizing data by data field characterizations like country or location, issued patent, patent application, or specific metrics, and receive user input. These amount to receiving data, organizing data, sorting data, filtering data, displaying data, and displaying data characterizations (highlighted countries on a display), which are not abstract ideas. The specification does not reveal that the core of the invention relates to advances in sending, receiving, displaying, sorting, filtering, or organizing data, or to the characterizations or characterized display of the characterizations of data. These limitations are not indicative of integration into a practical application.
Aside from the disclosure of using country, foreign or US/domestic geographies, and regions to filter data, the claims recite that the manipulated data is associated directly with the location, or with the matters specific to locations. Therefore, the filtering of the data by geography is not related to the manipulation steps recited in the abstract ideas beyond providing filtration of a data characterization held in the databases. This is evidenced in the specification in ¶’s [0031, 0033, 0037, 0038, 0044, 0049, 0063, 0064, 0080, 0084, 0089, 0094, 0095, 0098, 00100, 00123, 00124, 00127, 00154, 00156, 00157, 00158, 00176, and 00177] under the Detailed Description, which outline that the data includes different data characterizations, i.e. data in data fields, which may include further characterizations according to the associated geography characterizations, i.e. by country, as foreign, from the U.S./ as domestic, or via regions, i.e. jurisdictions. Unlike the claims, which draw on the geographical jurisdictions or countries, i.e. characterized data fields, the specification clearly discloses that the location data is used only for further filtering data. The specification does not reveal that the core of the invention is drawn to advances data filtering, or that data filtering is a core part of the analysis steps outside of generally filtering data to be analyzed or that has already been analyzed based on data that was received.
The additional elements recited are: databases, graphical user interfaces, a processor, in claim 9: a portfolio management system, a memory, and in claim 16: a non-transitory machine readable medium, and a machine. These additional elements are disclosed in the specification and recited in the claims at a high level of generality. The specification further discloses that these elements are general purpose computing structures that may be characterized, including numerous characterized databases. The claims recite and the specification discloses general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent analytics generation for patent portfolio management, utilizing and generally linked to the general-purpose computing structures that perform the abstract ideas, and generally linked to the technical field (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words “apply it,” they do not improve on the functioning of a computer, for which they are applied with, according to MPEP 2016.05(a).
Since the additional elements are general purpose computing structures merely being applied in the field of patent portfolio management systems, the claims are limiting the field of use to a particular technical field. Since the additional elements are generally linked to the use of the abstract ideas, the claims are further generally linking the use of the abstract idea the field of use in patent portfolio management systems, without improving the technical field, when viewed as a whole. The improvements asserted in the 12/19/2025 arguments are "R&D budget planning, litigation response strategy, competitive technology analysis, acquisition analysis, portfolio maintenance cost management, or licensing revenue evaluation" through automated analysis capabilities.”
None of these improvements disclose a relationship to improvements to the functioning of a computer or relate directly to the claimed limitations. These improvements are not recited in the claims, where the claims recite no financial management functions, and the claims in light of the specification, require human interaction to manage litigation response strategies, competitive technology analysis, and acquisition analyses. Therefore, the generally linked, general purpose computing structures are the only additional elements aside from the abstract ideas. These additional elements are not indicative of improvements to the function of a computer or to any other technology or technical field, when viewed as a whole.
The claims recite characterized data, which is non-functional descriptive information. Characterized data is not patentably distinctive cannot be utilized to integrate the abstract ideas into a practical application.
These functions are data manipulations of analyzing, parsing, identifying, comparing, matching, and filtering, implemented using general purpose computing structures as a tool to perform these abstract ideas. The specification does not reveal that the core of the invention discloses advances to these data manipulation techniques. The claims are focused on the characterizations of the data and the data manipulations performed by general-purpose computing structures. These computing structures are disclosed as performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results.
The claims recite performing general business functions performed in any manner, returning the solution without specificity regarding the mechanisms utilized. According to MPEP 2106.05(f)(2), invoking general purpose computing structures to perform abstract ideas that historically were performed by hand in order to increase speed or efficiency of general-purpose computing structures, i.e. the additional elements, are not a practical application.
The Applicant states and the claims recite that the claims cannot be practically performed manually for over 100 data matters, however, the specification discloses in:
¶ [0018] “hand-classified data sets,”
¶ [0020] “This qualitative analysis may require further classification by human or statistical means to arrive at patent mappings that reflect the breadth of the patent claims,”
¶ [0038] “documents and/or other prior art may be manually or automatically stored, cross-cited, and associated with related family matters,”
¶ [0052] “a user of patent management system 102 may then examine the flagged data and manually enter the information,”
¶ [0082] “allow manual addition of synonyms to enhance analysis,”
¶ [0091] “(a user may pick the combination of keywords). Also, a user may search for and map concepts to cited art that are not shown. Prior art rejections may be mapped to specific paragraphs of document and shown in a workroom or in a spreadsheet. Examiner statistics may also be part of the office action workroom, or examples of other rejections by examiner. Other rejections on the same references, or reference history, may be shown as well,”
¶ [00111-000181] various manual user operations that are also performed by the claims.
These sections of the specification disclose that human intervention may be required or implemented in the instant application to perform functions of the claims refuting the argument that the limitations are not practically performed manually for portfolios exceeding 100 patent matters, where the specification does not delineate user operations that may or may not be practical for portfolio of any size. Examiner Note: This application is over 100 patent matters and the Examiner performed the search and analysis of the claims manually across more than 100 related prior art patent, patent application, and NPL documents, by jurisdiction, with the aid of a computing structure in a similar manner to that presented in the claims.
The recited abstract ideas are not used in some other meaningful way beyond being generally linked to the additional elements, i.e. the general-purpose computing structures, or beyond being generally linked to patent portfolio management systems. Therefore, the claims are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Dependent Claims
Regarding Claims 3, 10, and 17: The claim passively defines how unique keywords are determined, without positively reciting claim limitations. The claims define how the unique keywords are determined, in terms of passive identification techniques that are positively recited in the independent claims. Since the claims are passively defining how the unique keywords are determined, without positively recited claim limitations, the claims do not recite abstract ideas. Therefore, the additional elements cannot be used to integrate the claim into a practical application, nor can they amount to significantly more.
Regarding Claims 4, 11, and 18: the claims recite: in response to country filtered patent portfolio creation, identifying data related to a profile, automatically assigning a name to the profile using a profile identifier and at least one patent specific data, creating a second portfolio with the automatically assigned name, and adding the profile related identified document data to the second portfolio. These limitations are in the categories of mental processes and certain methods of organizing human activity, managing personal behaviors or relationships or interactions between people. The claims are similar in nature to a mental process that a neurologist should follow when testing a patient for nervous system malfunctions, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982) because they follow the process a patent/IP professional should follow when making patent based decisions including identifying data related to a profile in a patent portfolio management system, assigning a name for the first profile portfolio using profile data, creating a second profile portfolio based on the original profile with the automatically assigned name, and adding the identified data to the second portfolio. The claims automate the historically human performed tasks of analyzing intellectual property according to metrics in order to produce a file, name a file, and move data into the file, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the managing business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Regarding Claims 5 and 13 the claims recite: generate a graphical user interface (GUI), for display and display two indications, which are not abstract ideas. The specification does not reveal that the core of the invention advances GUI generation, display technologies, or characterized display elements. Therefore, the additional elements, inherited from the independent claims, cannot be integrated into a practical application or amount to significantly more.
Regarding Claims 6 and 12, the claims further define the profile, limiting it to be based on the inventor, owner, or the patent itself. Since the claims are further defining the profile, the claims do not recite abstract ideas. Therefore, the additional elements, inherited from the independent claims, cannot be integrated into a practical application or amount to significantly more.
Regarding Claims 7, 14, and 20: the claims recite generating analytics, included in creating the first portfolio, which is an abstract idea in the categories of mathematical concepts including mathematical relationships and calculations, mental processes, and certain methods of organizing human activity, in the subcategory of commercial or legal interactions for business relations. Since mathematical relationships form the basis of analytics, without specificity of the particular analytics that are generated in these claims, the broadest reasonable interpretation is that the claims generates analytics that both show mathematical relationships between different metrics and that result in the calculations of the non-specific analytics themselves. The claims automate the historically human performed business, legal, and corporate task of analyzing intellectual property to generate analytics to be included in the portfolio, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Regarding Claims 8 and 15: the claims recite, upon selection of a second user interface element, automatically generating analytics which is an abstract idea in the categories of mathematical concepts including mathematical relationships and calculations, mental processes, and certain methods of organizing human activity, in the subcategory of commercial or legal interactions for business relations. Since mathematical relationships form the basis of analytics, without specificity of the particular analytics that are generated in these claims, the broadest reasonable interpretation is that the claims generates analytics that both show mathematical relationships between different metrics and that result in the calculations of the non-specific analytics themselves. The claims automate the historically human performed business, legal, and corporate task of analyzing intellectual property to generate analytics to be included in the portfolio, with human analysis and decision intervention disclosed in the instant specification ¶ [0019] that “may include tools to help the parties involved in the patenting process make decisions at each stage of a patent asset’s life.” These limitations are also mental processes because they automate processes of performing observations, evaluations, judgments, and opinions that are historically performed by the human mind or with the aid of tools as further discussed above in the independent claims. The claims perform the tasks historically performed by a patent examiner or other patent IP professional, including the business relations between the IP professionals and/or inventors.
The additional elements recited are the same elements of the independent claim, i.e. general-purpose computing structures. The claims recite general-purpose computing structures performing generic business functions that attempt to cover any solution to the problem with no restriction on how the result is accomplished and no description of the mechanisms for accomplishing the results. The general-purpose computing structures are used as tools used to implement the abstract ideas, i.e. they amount to “apply it.” Therefore, the claims amount to instructions to apply the Judicial Exceptions in a technical field of patent portfolio management, i.e. the abstract ideas are generally linked to the general-purpose computing structures and the technical field of use (MPEP 2106.05(f) and (h)). Since the limitations are merely adding the words apply it, they do not improve on the functioning of a computer or the field of use according to MPEP 2016.05(a). Lastly, as shown in the independent claims, the claim limitations are no more than a drafting effort designed to monopolize the exceptions.
Step 2B: Additionally, the analysis for Step 2B is commensurate with the analysis above for step 2A, Prong 2, therefore, for the same reasons stated above, since these the additional elements do not integrate the judicial exception into a practical application, it is also asserted that these additional elements, when taken individually and in combination, do not result in the claim as a whole amounting to significantly more than the identified judicial exceptions. The claim is directed to an abstract idea without significantly more.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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ANGELA HATCH
Examiner
Art Unit 3626
/ANGELA HATCH/Examiner, Art Unit 3626
/KIERSTEN V SUMMERS/Primary Examiner, Art Unit 3626
Prosecution Insights