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
Claims 1-5 and 8 are pending in this application.
Claims 6-7 and 9 are canceled.
Response to Arguments
Regarding Rejection under 35 U.S.C. 101
Applicant’s arguments with respect to rejections have been fully considered but they are not persuasive.
Regarding Claims 1-5 and 8, the Applicant argues that the rejection under 35 U.S.C. 101 is improper because the claims recite significantly more than the abstract idea by the claimed invention improves technological field of transcript parsing. Applicant’s claim as a whole is more than a drafting effort designed to monopolize the exception (REMARKS, on page 5 of 11, 2nd paragraph – page 7 of 11).
However, Examiner respectfully disagrees that the rejection under 35 U.S.C. 101 is improper because the newly amended claim 1 is still directed to abstract idea. The patent-eligibility analysis below follows 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, dated July, 2024, and Memorandum on Subject Matter Eligibility Declarations, dated December 4, 2025.
Step 1: Claim 1 recites a method performed on generic data processing hardware comprising the following limitations:
parsing a transcript of a discourse by detecting a series of anchor questions. —a task humans routinely perform mentally or with conventional tools.
identifying a set of semantically related discourse for each anchor question. - i.e., a cognitive process.
associating each semantically self-contained passage with a respective navigation marker. --- rule-based decision-making, which is a form of organizing human activity / mental process.
merging at least two of the semantically self-contained passages. --- decision-making, which is a form of organizing human activity / mental process.
These steps describe the collection, processing, and analysis of data relating to anchor questions, followed by merging based on similarity. Courts have consistently held that such concepts—collecting information, analyzing or processing data, and adjusting a model or system based on the results—are abstract ideas. See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (data collection, analysis, and display are abstract ideas); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (filtering content is an abstract idea).
These steps are information processing and decision-making — activities that can be performed in the human mind or with pen and paper, and that courts/USPTO treat as abstract ideas.
Conclusion for Step 1:Yes — the claim is “directed to” an abstract idea (mental processes + organizing human activity).
Step 2: Does the claim recite an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter?
There is no recitation of a specific improvement to the functioning of the computer or any particular hardware configuration that improves the performance of the device or the speech recognition system.
The claim must apply the abstract idea in a way that improves the functioning of a computer or another technology.
Here:
The claim applies the abstract idea in the context of analyzing and processing a transcript.
However, the claim does not recite how the “self-contained”, “similarity metric” and “adjustable similarity threshold” is implemented in a novel way, how the rules/policies are structured to improve system performance, or any specific technical solution to a technical problem.
Conclusion for Step 2:No — the claim does not integrate the exception into a practical application that improves computer technology.
Regarding Rejection under 35 U.S.C. 103
Applicant’s arguments with respect to rejections have been fully considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
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 1-5 and 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The independent claim 1 recites “parsing a transcript of a discourse into a series of semantically self- contained passages by detecting a series of anchor questions in the discourse, each anchor question corresponding to a semantic shift in the discourse, and identifying a set of semantically related discourse for each anchor question, associating each semantically self-contained passage with a respective navigation marker that enables locating of the respective semantically self- contained passages in the transcript, the transcript being a deposition in a legal proceeding such that the navigation markers are derived from a set of page and line numbers of the transcript; and merging at least two of the semantically self-contained passages by determining a similarity metric related to contextual and thematic alignment of the at least two semantically self-contained passages, the similarity metric being governed by an adjustable similarity threshold that results in varying amounts of citations and merged passages”.
The limitation of “parsing…”, “identifying…”, “associating…” and “merging” is a process that, under its broadest reasonable interpretation, covers a human organizing of activities. More specifically, a human reads a document, organizes questions and corresponding answers by topic or meaning, and associates them with markers.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to the integration of the abstract idea into a practical application, the additional element of using a computer amounts to no more than mere instructions to apply an exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
With respect to dependent claims 2-4, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
With respect to dependent claim 5, the claim does not recite any technical details about how the neural network detects the questions, nor does it describe any novel hardware or software architecture that improves computer functionality. The steps are performed on generic hardware without any specific enhancement to the technology.
With respect to dependent claim 8, the claim does not recite any technical details about how the large language model operates differently from conventional language models, nor does it describe any novel hardware or software architecture that improves computer functionality. The steps are performed on generic hardware without any specific enhancement to the technology.
The claims thus fail to recite an inventive concept sufficient to transform the abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 221 (holding that implementing an abstract idea on a generic computer is insufficient).
Therefore, claims 1-5 and 8 are rejected.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached form PTO-892.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEONG-AH A. SHIN whose telephone number is (571)272-5933. The examiner can normally be reached 9 AM-3PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pierre-Louis Desir can be reached at 571-272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Seong-ah A. Shin
Primary Examiner
Art Unit 2659
/SEONG-AH A SHIN/Primary Examiner, Art Unit 2659
Prosecution Insights