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 .
1. Claims 1, 5, and 10 are currently pending in this application.
Claims 1, 5, and 10 are amended as filed on 04/23/2026.
Claims 2-4, 6-9, and 11-13 are canceled as filed on 04/23/2026.
Claim Rejections - 35 USC § 103
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.
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) 1, 5, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over McCann et al. (Pre-Grant Publication No. 2024/0184834 A1), hereinafter McCann, in view of Anushiravani et al. (Patent No. US 12,235,912 B1), hereinafter Anush, and further in view of Yudin et al. (Pre-Grant Publication No. US 2024/0202202 A1), hereinafter Yudin.
2. With respect to claims 1 and 10, McCann taught a system for providing privacy-preserving search suggestions (0077-0078), comprising: at least one computing device comprising at least one storage device for storing one or more program modules, wherein the computing device comprises Large Language Models (0106), wherein the program modules executed by the computing device causes the computing device to: receive an input data comprising a plurality of input having text content (0110 & 0043, the words presented to the search query); generate at least one first word embedding for each input (0119, the tokens); generate at least one second word embedding for each first search phrase (0110, the phrases being compared to the user input, which would also rely on tokenized data).
However, McCann did not explicitly state to compare each first word embedding to the corresponding second word embedding to rank the first search phrases based on similarity to the input and create a plurality of ranked search phrases for each document; to generate a list of first search phrases for each document using Large Language Models, and wherein the plurality of ranked search phrases is an arrangement of first search phrases in an order based on similarity to the documents. On the other hand, Anush did teach to compare each first word embedding to the corresponding second word embedding to rank the first search phrases based on similarity to the input and create a plurality of ranked search phrases for each document (14:62 to 15:5, where the generated search terms can be seen in 13:21-28); to generate a list of first search phrases for each document using Large Language Models (13:21-28), and wherein the plurality of ranked search phrases is an arrangement of first search phrases in an order based on similarity to the documents (14:62 to 15:5). Both of the systems of McCann and Anush are directed towards improving user search queries and therefore, it would have been obvious to a person having ordinary skill in the art, at the time of the effective filing of the invention, to modify the teachings McCann, to utilize specifically suggesting search terms, in order to improve the efficiency of the user’s searching.
However, McCann did not explicitly state that the input was a document and to deduplicate one or more ranked search phrases having a rank lower than a first predefined rank, and execute remaining ranked search phrases after deduplication in a search engine to evaluate search results and determine a set of final search phrases from the remaining ranked search phrases based on the search results; wherein the deduplication involves conducting pair-wise comparisons of the embeddings associated with each search phrase to determine conceptual duplicates, and wherein the computing device is further configured to refine the set of final search phrases by providing a set of final search phrases having a rank higher than a second predefined rank. On the other hand, Yudin did teach that the input was a document (0011) and to deduplicate one or more ranked search phrases having a rank lower than a first predefined rank, and execute remaining ranked search phrases after deduplication in a search engine to evaluate search results and determine a set of final search phrases from the remaining ranked search phrases based on the search results (0088); wherein the deduplication involves conducting pair-wise comparisons of the embeddings associated with each search phrase to determine conceptual duplicates (0088, where this is part of the processing of removing duplicates under broadest reasonable interpretation of a pair-wise comparison), and wherein the computing device is further configured to refine the set of final search phrases by providing a set of final search phrases having a rank higher than a second predefined rank (0083, where the cutoff is implicitly taught such that the list does not appear to be infinite under broadest reasonable interpretation). Both of the systems of McCann and Yudin are directed towards improving user search queries and therefore, it would have been obvious to a person having ordinary skill in the art, at the time of the effective filing of the invention, to modify the teachings McCann, to utilize specifically suggesting search terms, in order to improve the efficiency of the user’s searching.
3. With respect to claim 5, McCann taught a method for providing privacy-preserving search suggestions executed in a system (0077-0078) comprising at least one computing device comprising at least one storage device for storing one or more program modules (0047), wherein the program modules are executed by the computing device to perform one or more operations, wherein the method comprising the steps of: receiving an input data comprising a plurality of input having text content (0110, the words presented to the search query); feeding each input into one or more Large Language Models executed at the computing device (0106); wherein the step of filtering further comprising the steps of: generating at least one first word embedding for each document (0119, the token); generating at least one second word embedding for each first search phrase (0110, the phrases being compared to the user input, which would also rely on tokenized data); comparing each first word embedding to the corresponding second word embedding to rank the first search phrases based on similarity to the documents and creating a plurality of ranked search phrases for each document (14:62 to 15:5, where the generated search terms can be seen in 13:21-28);
However, McCann did not explicitly state to generate a list of first search phrases for each document using Large Language Models, filtering the list of first search phrases based on similarity to the documents and providing a set of final search phrases, wherein the plurality of ranked search phrases is an arrangement of first search phrases in an order based on similarity to the documents. On the other hand, Anush did teach generate a list of first search phrases for each input using Large Language Models (13:21-28), filtering the list of first search phrases based on similarity to the documents and providing a set of final search phrases (14:62 to 15:5, where the generated search terms can be seen in 13:21-28), wherein the plurality of ranked search phrases is an arrangement of first search phrases in an order based on similarity to the documents (14:62 to 15:5). Both of the systems of McCann and Anush are directed towards improving user search queries and therefore, it would have been obvious to a person having ordinary skill in the art, at the time of the effective filing of the invention, to modify the teachings McCann, to utilize specifically suggesting search terms, in order to improve the efficiency of the user’s searching.
However, McCann did not explicitly state that the input was a document; deduplicating one or more ranked search phrases having a rank lower than a first predefined rank, and executing remaining ranked search phrases after deduplication in a search engine to evaluate search results and determining a set of final search phrases from the remaining ranked search phrases based on the search results, wherein the deduplication involves conducting pair-wise comparisons of the embeddings associated with each search phrase to determine conceptual duplicates, and refining the set of final search phrases by providing a set of final search phrases having a rank higher than a second predefined rank. On the other hand, Yudin did teach that the input was a document (0011); deduplicating one or more ranked search phrases having a rank lower than a first predefined rank, and executing remaining ranked search phrases after deduplication in a search engine to evaluate search results and determining a set of final search phrases from the remaining ranked search phrases based on the search results (0011), wherein the deduplication involves conducting pair-wise comparisons of the embeddings associated with each search phrase to determine conceptual duplicates (0088, where this is part of the processing of removing duplicates under broadest reasonable interpretation of a pair-wise comparison), and refining the set of final search phrases by providing a set of final search phrases having a rank higher than a second predefined rank (0083, where the cutoff is implicitly taught such that the list does not appear to be infinite under broadest reasonable interpretation). Both of the systems of McCann and Yudin are directed towards improving user search queries and therefore, it would have been obvious to a person having ordinary skill in the art, at the time of the effective filing of the invention, to modify the teachings McCann, to utilize specifically suggesting search terms, in order to improve the efficiency of the user’s searching.
Response to Arguments
Applicant's arguments filed 04/23/2026 have been fully considered but they are not persuasive.
4. The applicant argues on page 7 that the “independent claims have also been amended to recite that "the deduplication involves conducting pair-wise comparisons of the embeddings associated with each search phrase to determine conceptual duplicates".” The claim amendments were moved (directly) from the canceled dependent claims and will be, accordingly, handled by any arguments made against the previously presented rejection.
5. The applicant argues, on page 9 that “MPEP 2143 recites seven rationales that may support a conclusion of obviousness: (1) combining prior art elements according to known methods to yield predictable results; (2) simple substitution of one known element for another to obtain predictable results; (3) use of known technique to improve similar devices (methods or products) in the same way; (4) applying a known technique to a known device (method or product) ready for improvement to yield predictable results; (5) "obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (6) known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (7) some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. With this in consideration, Applicants respectfully argue that the combination of McCann, Anushiravani and Yudin does not render the instant claims as obvious, as the combination fails to support any of these rationales.”
However, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, all of the references are directed towards improving search queries and one skilled in the art would pursue related technology in order to solve problems.
6. The applicant argues on page 10 that “Applicants acknowledge that McCann, teaches systems and methods for a customized search platform, however, the mere fact that McCann discloses such a search platform does not teach or suggest in any way the method of the invention as presently claimed”. However, the examiner contends the one skilled in the art would like at similar technology in order to overcome perceived problems. The applicant has argued that the claimed limitations are not taught as a whole, but has not provided specific details of what is believed to not be shown by the provided citations.
7. The applicant argues on page 11 that to “arrive at the claimed invention, one would need to selectively extract disparate elements from multiple references and reconstruct them into a new configuration using impermissible hindsight, which is prohibited under KSR and its progeny.” In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH L GREENE whose telephone number is (571)270-3730. The examiner can normally be reached Monday - Thursday, 10:00am - 4:00pm.
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/JOSEPH L GREENE/Primary Examiner, Art Unit 2443
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