DETAILED ACTION
The following is a Non-Final Office Action in response to communications filed April 7, 2026. Claims 1–2 and 10–12 are amended. Currently, claims 1–2, 4, 6, and 9–14 are pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 7, 2026 has been entered.
Response to Amendment
Applicant’s Response is not sufficient to overcome the previous objection to claim 1 for informalities. Accordingly, the previous objection to claim 1 is maintained.
Further, Applicant’s Response necessitates new objections for informalities, and Examiner directs Applicant to the relevant explanation below.
Applicant’s Response is not sufficient to overcome the previous rejection of claims 1–2, 4, 6, and 9–14 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Accordingly, the previous rejection of claims 1–2, 4, 6, and 9–14 under 35 U.S.C. 112(b) is maintained.
Further, Applicant’s Response necessitates new grounds of rejection under 35 U.S.C. 112(b), and Examiner directs Applicant to the relevant explanation below.
With respect to the previous rejection of claims 1–2, 4, 6, and 9–14 under 35 U.S.C. 101, Applicant’s remarks have been fully considered but are not persuasive.
Applicant first asserts that the claims are similar to the claims of McRO, Inc. v. Bandai Namco Games Am. Inc. because “claim 1 recites means and functions that ‘operate a search engine to expand identification of documents on a network based on topical relevancy that surround documents relative to search string matching’ in a way that is not reasonable for a human to perform”. Examiner disagrees.
Examiner submits that Applicant’s remarks are not commensurate with the scope of the claims. More particularly, although the preamble of claim 1 mentions search engine operation and search string matching, claim 1 does not include any elements for operating a search engine or performing search string matching. As a result, the preamble does not limit the scope of the claim because the preamble elements constitute mere statements of purpose without limiting any of the claimed elements.
Even if the recited elements for “searching” were construed as encompassing operations of a search engine, Examiner submits that utilizing a search engine to perform “searching” is not analogous to the elements of McRo. In McRo, the claimed process for producing a sequence of synchronized, animated characters was deemed patent eligible because the process improved an existing technological process. As noted above, claim 1 does not include any elements limiting the “search engine” or encompassing any improvements in search engine technology. As a result, the elements for “searching” are broadly construed as embodying observations or evaluations that can be practically performed in the mind or by a human using pen and paper, and the “search engine” does not embody a technical improvement because the engine does no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, Applicant’s remarks are not persuasive.
Applicant next asserts that the claim does not recite an abstract idea because “operating a search engine” is not organizing human behavior. Examiner disagrees. As an initial mater, Applicant has not presented any arguments addressing any of the claimed elements identified as reciting an abstract idea under Step 2A Prong One. Therefore, Examiner maintains that the claims recite an abstract idea, and Applicant’s remarks are not persuasive.
Further, as noted above, the preamble of claim 1 is nonlimiting. However, even if the search engine were included within the scope of claim 1, Examiner submits that the inclusion of additional elements within a claim does not preclude a claim from reciting an abstract idea under Step 2A Prong One. MPEP 2106.07(a) sets forth the process for formulating a rejection under 35 U.S.C. 101 and indicates that abstract claim elements are identified under Step 2A Prong One, whereas additional elements are identified and considered under Step 2A Prong Two and Step 2B. As a result, the presence of additional elements does not impact a finding under Step 2A Prong One that a claim recites abstract claim elements because abstract elements are identified before considering additional elements.
Accordingly, Applicant’s remarks are not persuasive, and the previous rejection under 35 U.S.C. 101 is maintained and reasserted below.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recites “the documents retrieved” in line 4 of the element reciting “storing … a plurality of company data structures”. However, claim 1 previously recites “documents” in the preamble and “the documents” in the element for “searching and retrieving”. Examiner recommends amending the claim to recite “the documents
Claim 1 recites “the companies” as the final element of the limitation reciting “accessing the first patterns and the second patterns”. However, claim 1 previously recites “a plurality of companies”. As a result, Examiner recommends amending the claim to recite “at least one of the one or more business lines and one or more of the plurality of companies” as the final element of the limitation reciting “accessing the first patterns and the second patterns” in order to avoid issues of clarity under 35 U.S.C. 112(b).
Claim 1 further recites “the one or more of the business lines” in the element reciting “tagging with one or more tags each document”. However, claim 1 previously recites “the one or more business lines” in the element reciting “storing in the electronic memory one or more business line data structures”. Examiner recommends amending claim 1 to recite “the one or more .
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1–2, 4, 6, and 9–14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the company” as the final element in the limitation reciting “storing in an electronic memory a plurality of company data structures”. There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, claim 1 is interpreted as reciting “[[the]] a company” as the final element in the limitation reciting “storing in an electronic memory a plurality of company data structures”.
Claim 1 further recites “the one or more business lines” in line 2 of the element for “storing … one or more business line data structures”. There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, the claim is interpreted as reciting “[[the]] one or more business lines” in line 2 of the element for “storing … one or more business line data structures”.
Claim 1 further recites “documents retrieved” in line 4 of the element for “storing … one or more business line data structures”. However, claim 1 previously recites “documents” in the preamble, “the documents” in the element for “searching and retrieving”, and “the documents” in the element reciting “storing … a plurality of company data structures”. As a result, the scope of the claim is indefinite because it is unclear whether Applicant intends for the recitation of “documents retrieved” to reference the previous recitations of “documents” or intends to introduce second, different “documents retrieved”.
For purposes of examination, claim 1 is interpreted as reciting “the documents
Claim 1 recites “the patterns” in line 2 of the element reciting “accessing the first and the second patterns”. Although claim 1 previously recites “first patterns” and “second patterns”, there is insufficient antecedent basis for “the patterns” in the claim.
For purposes of examination, the claim is interpreted as reciting “the first patterns and the second patterns” in line 2 of the element reciting “accessing the first and the second patterns”.
Claim 1 recites “one or more of the plurality of companies” in lines 2–3 of the element for “tagging”. However, claim 1 previously recites “one or more of the plurality of companies” in lines 6–7 of the element reciting “storing … one or more business line data structures”. As a result, the scope of the claim is indefinite because it is unclear whether Applicant intends for the second recitation to reference the first recitation or intends to introduce a second, different “one or more of the plurality of companies”.
For purposes of examination, and in view of the objection raised above, claim 1 is interpreted as reciting “tagging with one or more tags each document associated with the one or more the one or more of the plurality of companies”.
Claim 1 recites “a particular business line” in line 4 of the element reciting “accessing and searching the company data structure”. However, claim 1 previously recites “a particular business line” in lines 3–4 of the element reciting “accessing and searching a company data structure”. As a result, the scope of the claim is indefinite because it is unclear whether Applicant intends for the second recitation to reference the first recitation or intends to introduce a second, different “particular business line”.
For purposes of examination, claim 1 is interpreted as reciting “[[a]] the particular business line” in line 4 of the element reciting “accessing and searching the company data structure”.
Claim 1 further recites “the business line data structure of the particular business line” in lines 6–7 of the element reciting “accessing and searching the company data structure”. There is insufficient antecedent basis for this limitation in the claim.
For purposes of examination, the claim is interpreted as reciting “[[the]] a business line data structure of the particular business line” in the element reciting “accessing and searching the company data structure”.
Claim 1 recites “the potential competitor to the particular company” and “the common business lines” in lines 3 and 6, respectively, of the element for “calculating … a score that quantifies a competitive relationship”. There is insufficient antecedent basis for these limitations in the claim.
For purposes of examination, the claim is interpreted as reciting “[[the]] a potential competitor to the particular company” and “[[the]] each common business line” in the element for “calculating”.
In view of the above, claim 1 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2, 4, 6, and 9–14, which depend from claim 1, inherit the deficiencies described above. As a result, claims 2, 4, 6, and 9–14 are similarly rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 12 recites “one or more processors” in the element reciting “means … for identifying … a set of potential competitors of a second company”. However, claim 1, from which claim 12 depends, previously recites “one or more processors”. As a result, the scope of claim 12 is indefinite because it is unclear whether Applicant intends for the recitation of claim 12 to reference the recitations of claim 1.
For purposes of examination, claim 12 is interpreted as reciting “means, including the one or more processors, for identifying … a set of potential competitors of a second company”.
In view of the above, Examiner respectfully requests that Applicant thoroughly review the claims for compliance with the requirements set forth under 35 U.S.C. 112(b).
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 1–2, 4, 6, and 9–14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1–2, 4, 6, and 9–14 are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea.
With respect to Step 2A Prong One of the framework, claim 1 recites an abstract idea. Claim 1 includes elements for “searching for documents”; “a plurality of company data structures for a plurality of companies, each company data structure for each company of the plurality of companies [having] first patterns of document elements in the documents including (i) word sets with a context of anchor words and (ii) a first set of one or more business line identifiers that identify a set of one or more business lines associated with the company”; “one or more business line data structures for the one or more business lines, each business line data structure [having] second patterns of document elements in documents including a second set of one or more business line identifiers that identify one of the one or more business lines and one or more company identifiers that identify one or more of the plurality of companies associated with the business line”; “accessing the first patterns and the second patterns and based on the patterns and determining a relevance score representing at least a number of anchor words in each document related to at least one of the one or more business lines and one or more of the companies”; “tagging with one or more tags each document associated with the one or more of the business lines and one or more of the plurality of companies if the relevance score is above a threshold value”; “searching a company data structure including the one or more tags for a particular company and identifying, for the particular company, a particular business line from the set of one or more business lines identified in the company data structure for the particular company”; “searching the company data structure including the tags for a particular company and identifying one or more companies associated with a particular business line as a set of one or more potential competitors of the particular company from the one or more company identifiers in the business line data structure of the particular business line”; “determining a threshold score for identifying one or more actual competitors of the particular company based at least partly on a number of business lines identified in the company data structure associated with the particular company and a number of companies identified in the business line data structure for each business line associated with the particular company”; “for each potential competitor of the one or more potential competitors, calculating a score that quantifies a competitive relationship of the potential competitor to the particular company based at least partly on a number of business lines in common between the particular company and the potential competitor and relative importance of the common business lines to the particular company”; “when the score is above the threshold score, associating the potential competitor as an actual competitor of the particular company”; and “providing, for accessing and displaying, a set of data for the one or more actual competitors of the particular company based on company identifiers in the company data structure for the particular company.”
The limitations above recite an abstract idea. More particularly, the elements identified above recite certain methods of organizing human activity for commercial business relations and/or managing personal behavior or relationships or interactions between people because the elements describe a process for analyzing and evaluating competitors of a company. Further, the elements identified above recite mental processes because the elements embody observations or evaluations that can be practically performed in the mind of by a human using pen and paper. As a result, claim 1 recites an abstract idea under Step 2A Prong One.
Claims 2, 4, 6, and 9–14 further describe the process for analyzing and evaluating competitors of a company and further recite certain methods of organizing human activity and/or mental processes for the same reasons as stated above. As a result, claims 2, 4, 6, and 9–14 recite an abstract idea under Step 2A Prong One.
With respect to Step 2A Prong Two of the framework, claim 1 does not include additional elements that integrate the abstract idea into a practical application. Claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include means, including one or more processors, a network, an electronic memory, at least one of a set of electronic devices, and elements for “retrieving” documents, “storing” data structures, and “accessing” data. When considered in view of the claim as a whole, the additional elements do not integrate the abstract idea into a practical application because the additional computer elements are generic computing components that are merely used as a tool to perform the recited abstract idea, and the steps for “retrieving”, “storing”, and “accessing” are insignificant extrasolution activities to the recited abstract idea.
As noted above, the “search engine” recited in the preamble is deemed nonlimiting. However, even if the engine were considered as an additional element, Examiner submits that, when considered in view of the claim as a whole, the search engine does not integrate the abstract idea into a practical application because the additional element does no more than generally link the use of the recited abstract idea to a particular technological environment. As a result, claim 1 does not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two.
Claims 2, 4, 6, and 9–14 do not include any additional elements beyond those included with respect to the claims from which claims 2, 4, 6, and 9–14 depend. As a result, claims 2, 4, 6, and 9–14 do not include any additional elements that integrate the abstract idea into a practical application under Step 2A Prong Two for the same reasons as stated above.
With respect to Step 2B of the framework, claim 1 does not include additional elements amounting to significantly more than the abstract idea. As noted above, claim 1 includes additional elements that do not recite an abstract idea under Step 2A Prong One. The additional elements include means, including one or more processors, a network, an electronic memory, at least one of a set of electronic devices, and elements for “retrieving” documents, “storing” data structures, and “accessing” data. The additional elements do not amount to significantly more than the recited abstract idea because the additional computer elements are generic computing components that are merely used as a tool to perform the recited abstract idea, and the steps for “retrieving”, “storing”, and “accessing” are well-understood, routine, and conventional computer functions in view of MPEP 2106.05(d)(II), which identifies “receiving or transmitting data over a network”, “electronic recordkeeping”, and “storing and retrieving information in memory” as conventional computer functions.
As noted above, the “search engine” recited in the preamble is deemed nonlimiting. However, even if the engine were considered as an additional element, Examiner submits that the search engine does not amount to significantly more than the recited abstract idea because the additional element does no more than generally link the use of the recited abstract idea to a particular technological environment. Further, looking at the additional elements as an ordered combination adds nothing that is not already present when considering the additional elements individually. As a result, claim 1 does not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B.
Claims 2, 4, 6, and 9–14 do not include any additional elements beyond those included with respect to the claims from which claims 2, 4, 6, and 9–14 depend. As a result, claims 2, 4, 6, and 9–14 do not include any additional elements that amount to significantly more than the recited abstract idea under Step 2B for the same reasons as stated above.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 1–2, 4, 6, and 9–14 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 1–2, 4, 6, and 9–14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 10,546,311. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–10 of U.S. Patent No. 10,546,311 anticipate each element of corresponding claims 1–2, 4, 6, and 9–14.
Claims 1–2, 4, 6, and 9–14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 11,403,654. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–10 of U.S. Patent No. 11,403,654 anticipate each element of corresponding claims 1–2, 4, 6, and 9–14.
Claims 1–2, 4, 6, and 9–14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–10 of U.S. Patent No. 12,020,271. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1–10 of U.S. Patent No. 12,020,271 anticipate each element of corresponding claims 1–2, 4, 6, and 9–14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM S BROCKINGTON III whose telephone number is (571)270-3400. The examiner can normally be reached M-F, 8am-5pm, EST.
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/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623
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