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 .
This action is in response to the communication filed on May 13, 2024.
Claims 1-20 are pending in this action.
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 1-3, 5-6, 8-10, 12-13, 15-17, and 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) an abstract idea of labeling a document. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims directed to an abstract idea of labeling a document. The claims are drawn to process/computer program instruction/ device (a series of steps or acts) that similar to an idea ‘Of itself such as an instantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper’.
The claim does not require that the method/computer program instruction/ device be implemented by a particular machine. The method/computer program instruction/ device does not require a particular transformation of a particular article. There are no transformation of a physical objects or data into a different state or thing. This labeling a document is similar to delivering user-selected media content to a portable device found by the courts to be abstract idea (Affinity Labs of Tex., LLC v. Amazon.com Inc., 120 USPQ2d 1210 (Fed. Cir. 2016)) and also displaying certain results of the collection and analysis found by the courts to be abstract idea (Elec. Power Grp., LLC v. Alstom S.A., 119 USPQ2d 1739 (Fed. Cir. 2016).
This judicial exception is not integrated into a practical application because claims broadly recites the result (labeling a document including generating and predicting steps), rather than sufficiently claiming a means of achieving the result. See Two-Way Media Ltd. v. Comcast Cable Commons, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim requires the functional results ... but does not sufficiently describe how to achieve these results in a non-abstract way.”).
The claims recite a Judicial exception relating to “labeling a document, along with a generic multi-label classifier that simply used as tool to implement the abstract idea”. Here the claims do not change the underlying or other technology, rather the claimed techniques playing using a multi-label classifier as pedagogical tool. The claimed additional elements - - multi-label classifier- - “merely use a computer as a tool to perform an abstract idea” or “do no more than generally link the use of a judicial exception to a particular technological environment.” Memorandum, 84 Fed. Reg. at 55; see Customedia Techs., LLC v. Dish Network Corp., No. 2018- 2239, 2020 WL 1069742, at *3 (Fed. Cir. Mar. 6, 2020) (“We have held that it is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.”).
Accordingly, claims 1-3, 5-6, 8-10, 12-13, 15-17, and 19 do not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. As the claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is “directed to the .. . judicial exception.” Id. at 54.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic multi-label classifier. The claim amounts to no more than labeling a document using a multi-label classifier. Taking the claimed elements either individually or as ordered combination, that transform claims into patent-eligible application, since claims merely recite use of already existing multi-label classifier, and there is no “inventive concept” in play using multi-label classifier well- understood, routine, and conventional activities commonly used in industry of labeling a document, since claims, at most, attempt to limit abstract idea to particular technological environment, and such limitation has been held insufficient to save claims in this context, and since dependent claims are not rendered patent-eligible by recitation of additional steps, such as further describing backbone layer; multi-label classifier is trained; processing the document; even though additional limitations may narrow scope of claims. The claim as a whole does not amount to significantly more than the abstract idea itself. Accordingly, claims 1-3, 5-6, 8-10, 12-13, 15-17, and 19, are ineligible.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.11,983,502. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed language of claims 1-20 merely broadens the claimed subject matter of claims 1-20 of the patent, by omitting some limitations.
It has been held that the omission of an element and its function is an obvious expedient if the remaining elements perform the same function as before. In re Karlson, 136 USPQ 184 (CCPA). Also note Ex parte Rainu, 168 USPQ 375 (Bd. App. 1969); the omission of a reference element whose function is not needed would be obvious to one skilled in the art.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 7-10, 14-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pruksachatkun et al. (US 2021/0312128, herein after “Pru”).
As per claim 1, Pru discloses, a method comprising:
generating a set of sentences based on a document (Paragraph 0025, here claimed “document” is “medical record”);
predicting a set of labels for each sentence using a multi-label classifier (Paragraph 0025, “multi-label classifier”), the multi-label classifier including a word embedding backbone layer (Paragraph 0026-0028, “word embedding” and “intermediate layers”), at least one of a unigram convolution and bigram convolution (Paragraph 0027, “embedding output for each word or a pair of words in the focus sentence”); and
labeling the document based on the set of labels (Paragraph 0032).
As per claim 2, Pru discloses, wherein the word embedding backbone layer comprises a self-attended contextual word embedding backbone layer (Paragraph 0028).
As per claim 3, Pru discloses, wherein the multi-label classifier is trained using a weakly labeled data set (Paragraph Paragraph 0025).
As per claim 7, Pru discloses, wherein predicting the set of labels for each sentence using the multi-label classifier further comprises: extracting word embeddings for the sentence using the word embedding backbone layer; convolving the word embeddings using the at least one of the unigram convolution and bigram convolution to generate convolved features; and inputting the convolved features into a fully connected layer to predict the set of labels (Paragraphs 0025-0029).
As per claim 8, Pru discloses, a non-transitory computer-readable storage medium for tangibly storing computer program instructions capable of being executed by a computer processor (Paragraph 0071), the computer program instructions defining steps of:
generating a set of sentences based on a document (Paragraph 0025, here claimed “document” is “medical record”);
predicting a set of labels for each sentence using a multi-label classifier (Paragraph 0025, “multi-label classifier”), the multi-label classifier including a word embedding backbone layer (Paragraph 0026-0028, “word embedding” and “intermediate layers”), at least one of a unigram convolution and bigram convolution (Paragraph 0027, “embedding output for each word or a pair of words in the focus sentence”); and
labeling the document based on the set of labels (Paragraph 0032).
As per claims 9-10, 14-17, and 20, they are analyzed and thus rejected for the same reasons set forth in the rejection of claims 1-3 and 7-8, because the corresponding claims have similar limitations.
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.
Claim(s) 5-6, 12-13, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pruksachatkun et al. (US 2021/0312128) as applied to claims 1, 8, and 15 above, and further in view of Hoffmann et al. (US 2019/0243841).
As per claims 5-6, 12-13, and 19, Pru does not explicitly disclose, but Hoffmann discloses, -further comprising preprocessing the document by: splitting the document into the set of sentences based on a predefined split condition; identifying named entities in each sentence; and filtering the set of sentences based on the identified named entities (Paragraphs 0048 and 0066).
-wherein filtering the set of sentences comprises removing sentences that do not contain any named entities from a predefined list of entities (Paragraphs 0048 and 0066).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of Pru by including splitting document . . . identifying named entities as taught by Hoffmann so as to the extraction rules are applied to the unstructured file to identify data relevant to the field associated with the corresponding extraction rule, and the data identified as relevant is confirmed (Abstract).
Allowable Subject Matter
Claims 4, 11, and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and overcome the non-statutory obviousness double patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu et al. (US 2023/0102892) discloses, classifier determination through label function creation and unsupervised learning.
Aharonov et al. (US 2020/0065716) discloses, learning sentiment composition from sentiment lexicons.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abul K. Azad whose telephone number is (571) 272-7599. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bhavesh Mehta, can be reached at (571) 272-7453.
Any response to this action should be mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Or faxed to: (571) 273-8300.
Hand-delivered responses should be brought to 401 Dulany Street, Alexandria, VA-22314 (Customer Service Window).
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January 10, 2026
/ABUL K AZAD/ Primary Examiner, Art Unit 2656