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 communication is responsive to the application filed 6/17/2024.
Claims 1-15 are pending with claims 1 and 14-15 as independent claims.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/17/2024 was filed on the same mailing date of the application on 6/17/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more. Claim 1 (and also claims 14 and 15) recites the method performing the mental process of
a generation process of generating a prompt with reference to the instruction content and the reference information; and
. This bold underlined function can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, therefore the claim is reciting a mental process.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional elements (bold and underlined) of a first acquisition process of acquiring instruction content and reference information which is to be referred to in a process indicated by the instruction content; and a second acquisition process of acquiring a generation sentence which has been generated based on the prompt, are insignificant extra-solution activity of mere data gathering.
Claim 1 further recites additional elements of An information processing apparatus comprising at least one processor. This judicial exception is not integrated into a practical application because the mental process is merely applied using a general-purpose computer (at least one processor), with the operations comprising insignificant extra-solution activity. This additional elements of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional elements do not provide an inventive concept, thus the claim 1 is not eligible.
Claim 15 further recites additional element of a non-transitory storage medium storing a program. The judicial exception is not integrated into a practical application because the mental process is merely applied using a general-purpose computer (a non-transitory storage medium storing a program), with the operations comprising insignificant extra-solution activity. These additional elements of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional elements do not provide an inventive concept, thus the claims 14 and 15 are also not eligible.
Claim 2 dependent on claim 1 and therefore inherits the same judicial exception recited in claim 1. Claim 2, also, recites the operation of the at least one processor generates a prompt including the instruction content and the reference information. The bold underlined function can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept, thus claim 2 is not eligible.
Claim 3 dependent on claim 2 and therefore inherits the same judicial exception recited in claim 2. Claim 3, also, recites the operations of evaluate an evaluation target and past evaluation information which indicates evaluation. The operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 3 is not eligible.
Claim 4 dependent on claim 3 and therefore inherits the same judicial exception recited in claim 3. Claim 4, also, recites the operations of the generation sentence includes an evaluation result pertaining to the evaluation target, the evaluation result being obtained from one or more viewpoints decided with reference to the past evaluation information. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 4 is not eligible.
Claim 5 dependents on claim 4 and therefore inherits the same judicial exception recited in claim 3. Claim 4, also, recites the operations of the evaluation target is divided into a plurality of parts, and evaluation targets for the respective plurality of parts are included in the prompt. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 5 is not eligible.
Claim 6 dependents on claim 2 and therefore inherits the same judicial exception recited in claim 2. Claim 6, also, recites the operations of the instruction content includes an instruction to analyze an analysis target; and the reference information includes first type viewpoint information indicating one or more analysis viewpoints in an analysis process. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 6 is not eligible.
Claim 7 dependents on claim 6 and therefore inherits the same judicial exception recited in claim 6. Claim 7, also, recites the operations of the generation sentence includes an analysis result pertaining to the analysis target, the analysis result being obtained from each of one or more viewpoints indicated by the first type viewpoint information. The bold underlined operation can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process, and therefore the claims recite mathematical concept. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 7 is not eligible.
Claim 8 dependents on claim 7 and therefore inherits the same judicial exception recited in claim 7. Claim 8, also, recites the operations of in the first acquisition process, second type viewpoint information is acquired which indicates one or
more analysis viewpoints intended by a user in the analysis process; and in the generation process, the first type viewpoint information is decided with reference to the second type viewpoint information. The bold underlined operation can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 8 is not eligible.
Claim 9 dependents on claim 2 and therefore inherits the same judicial exception recited in claim 2. Claim 9, also, recites the operations of the instruction content includes an instruction to check a check target; and the reference information includes comparative information which is to be compared with the check target
in a checking process. The bold underlined operation can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 9 is not eligible.
Claim 10 dependents on claim 9 and therefore inherits the same judicial exception recited in claim 9. Claim 10, also, recites the operations of in a case where the check target is different from the comparative information, the instruction content includes an instruction to include a point of difference in the generation sentence. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 10 is not eligible.
Claim 11 dependents on claim 10 and therefore inherits the same judicial exception recited in claim 10. Claim 11, also, recites the operations of the generation sentence includes an analysis result pertaining to the analysis target, the analysis result being obtained from each of one or more viewpoints indicated by the first type viewpoint information. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 11 is not eligible.
Claim 12 dependents on claim 1 and therefore inherits the same judicial exception recited in claim 1. Claim 12, also, recites the operations of the at least one processor further carries out an identification process of identifying a work category of a target; and in the generation process, the at least one processor generates a prompt corresponding to the work category which has been identified in the identification process. The bold underlined operations can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 12 is not eligible.
Claim 13 dependents on claim 12 and therefore inherits the same judicial exception recited in claim 12. Claim 12, also, recites the operation of the at least one processor further carries out a revision process of revising the generation sentence in accordance with the work category which has been identified in the identification process. The bold underlined operation can reasonably be performed in the human mind, through observation, evaluation, judgement and opinion, with the aid of pen and paper, and therefore is reciting a mental process. The additional element of insignificant extra-solution activity and mere instructions to apply an exception are not indicative of integration into a practical application. Even when considered in combination, the additional element do not provide an inventive concept. Thus claim 13 is not eligible.
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.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) based upon being anticipated by Qadrud-Din et al. (US 11,860,914, filed 6/5/2023, hereinafter as Qadr).
Claim 1. An information processing apparatus comprising at least one processor, the at least one processor carrying out:
a first acquisition process of acquiring instruction content and reference information which is to be referred to in a process indicated by the instruction content; Qadr teaches in [col. 2, ln 20-41] “The text generation interface system may identify a set of documents including natural language, as well as one or more fields for querying the documents.” (emphasis added) examiner note: the set of documents including natural language and the one or more fields for querying the document may be instruction content and reference information,
a generation process of generating a prompt with reference to the instruction content and the reference information; Qadr teaches in [col. 2, ln 20-41] “The text generation interface system may then generate one or more prompts for extracting information related to the fields from the documents.” (emphasis added), and
a second acquisition process of acquiring a generation sentence which has been generated based on the prompt. Qadr teaches in [col. 2, ln 20-41] “The prompts may then be sent to the text generation modeling system, which may return structured text corresponding to the fields.” (emphasis added) examiner note: the returned structure text may be the acquired generation sentence.
Claim 2. The rejection of the information processing apparatus according to claim 1 is incorporated, wherein: in the generation process, the at least one processor generates a prompt including the instruction content and the reference information. Qadr teaches in [col. 5, ln 51-65] “A prompt may include a portion of text from one or more of the documents. The prompt may also include an instruction to identify data corresponding to one or more fields for the included portion of text.” (emphasis added) examiner note: the “instruction to identify data corresponding to one or more fields” may be instruction content. And the “portion of text of the documents” may be reference information.
Claim 3. The rejection of the information processing apparatus according to claim 2 is incorporated, wherein: the instruction content includes an instruction to evaluate an evaluation target; and the reference information includes past evaluation information which indicates evaluation in the past pertaining to the evaluation target. Qadr teaches in [col. 3, ln 12-25 and col. 6, ln 17-33] “review large numbers of documents and to understand them sufficiently well so as to classify them along one or more numerical and/or discrete dimensions. The documents may then be filtered to identify a subset of documents relevant to a particular search query. The text of the filtered documents may then be analyzed against the search query to produce document-level answers to the search query. These document-level answers may then be combined into a single response to the search query. For instance, the system may answer a search query that asks about which features are common in a subset of a corpus of documents that exhibit one or more characteristics… A prompt may include a portion of text from the identified documents and instructions based at least in part on the query. The text generation modeling system may complete the prompt, and the text generation interface system may determine an overall answer to the query based on the response or responses provided by the text generation modeling system.” (emphasis added) examiner note: “the instruction to evaluate an evaluation target” may be a search query about “common features” on a subset of the identified documents relevant to a particular search query as “the past evaluation information” or “reference contracts”.
Claim 4. The rejection of the information processing apparatus according to claim 3 is incorporated, wherein: the generation sentence includes an evaluation result pertaining to the evaluation target, the evaluation result being obtained from one or more viewpoints decided with reference to the past evaluation information. Qadr teaches in [col. 3, ln 12-25, col. 11, ln 55 to col. 12, ln 21] “parsing the one or more responses may involve combining text from different responses. For instance, a document may be divided into a number of portions, each of which is summarized by the large language model. The resulting summaries may then be combined to produce an overall summary of the document.” (emphasis added) examiner note: the responses may be the evaluation result pertaining to the evaluation target, which may be summaries for the responses. A generated response and/or summary, for a search query from a filtered identified subset of documents, may be viewpoint.
Claim 5. The rejection of the information processing apparatus according to claim 4 is incorporated, wherein: in the generation process, the evaluation target is divided into a plurality of parts, and evaluation targets for the respective plurality of parts are included in the prompt. Qadr teaches in [col. 3, ln 26-43] “an input document is divided into chunks via a chunking technique. Then, chunks are inserted into prompt templates for processing by a large language model such as the GPT-3 or GPT-4 available from OpenAI.” (emphasis added).
Claim 6. The rejection of the information processing apparatus according to claim 2 is incorporated, wherein: the instruction content includes an instruction to analyze an analysis target; and the reference information includes first type viewpoint information indicating one or more analysis viewpoints in an analysis process. Qadr teaches in [col. 30, ln 54 to col. 32, ln 15] “One or more clauses are selected for analysis at 1308. A text chunk is determined at 1304 based on the natural language documents. In some embodiments, the one or more may be determined by dividing the clauses identified at 1304 into chunks based on a chunk size… If the answer to a question can be inferred from a Clause, include that Clause in your answer list, even if the Clause does not directly answer the question. * If a Clause contains information that could potentially help answer the question if it were combined with other information not seen here, include this Clause in your answer list. * If a question is asking whether something is present or missing, a Clause closely related to the subject of the question that is missing the element is still helpful in answering the question. * If a header Clause is relevant, then list all the Clauses under that header as relevant as well.” (emphasis added) examiner note: the question may be to analyze clauses of a contract document, wherein the answer may be the analysis target that may be based on the subject (viewpoint/topic) of the question.
Claim 7. The rejection of the information processing apparatus according to claim 6 is incorporated, wherein: the generation sentence includes an analysis result pertaining to the analysis target, the analysis result being obtained from each of one or more viewpoints indicated by the first type viewpoint information. Qadr teaches in [col. 30, ln 54 to col. 32, ln 15] “One or more clauses are selected for analysis at 1308. A text chunk is determined at 1304 based on the natural language documents. In some embodiments, the one or more may be determined by dividing the clauses identified at 1304 into chunks based on a chunk size… If the answer to a question can be inferred from a Clause, include that Clause in your answer list, even if the Clause does not directly answer the question. * If a Clause contains information that could potentially help answer the question if it were combined with other information not seen here, include this Clause in your answer list. * If a question is asking whether something is present or missing, a Clause closely related to the subject of the question that is missing the element is still helpful in answering the question. * If a header Clause is relevant, then list all the Clauses under that header as relevant as well.” (emphasis added) examiner note: the question may be to analyze clauses of a contract document, wherein the answer may be the analysis target that may be based on the subject (viewpoint/topic) of the question.
Claim 8. The rejection of the information processing apparatus according to claim 7 is incorporated, wherein: in the first acquisition process, second type viewpoint information is acquired which indicates one or more analysis viewpoints intended by a user in the analysis process; and in the generation process, the first type viewpoint information is decided with reference to the second type viewpoint information. Qadr teaches in [col. 30, ln 54 to col. 32, ln 15] “One or more clauses are selected for analysis at 1308. A text chunk is determined at 1304 based on the natural language documents. In some embodiments, the one or more may be determined by dividing the clauses identified at 1304 into chunks based on a chunk size… If the answer to a question can be inferred from a Clause, include that Clause in your answer list, even if the Clause does not directly answer the question. * If a Clause contains information that could potentially help answer the question if it were combined with other information not seen here, include this Clause in your answer list. * If a question is asking whether something is present or missing, a Clause closely related to the subject of the question that is missing the element is still helpful in answering the question. * If a header Clause is relevant, then list all the Clauses under that header as relevant as well.” (emphasis added) examiner note: the question may be to analyze clauses of a contract document, wherein the answer may be the analysis target that may be based on the subject (viewpoint/topic) of the question.
Claim 9. The rejection of the information processing apparatus according to claim 2 is incorporated, wherein: the instruction content includes an instruction to check a check target; and the reference information includes comparative information which is to be compared with the check target in a checking process. Qadr teaches in [col. 30, ln 54 to col. 32, ln 15] “multiple clauses will contain information highly relevant or necessary to answer the question. If that happens, please list all such relevant clauses in your answer. * If there is/are Clause(s) that only partially answer the question, include them in your answer. * If the answer to a question can be inferred from a Clause, include that Clause in your answer list, even if the Clause does not directly answer the question. * If a Clause contains information that could potentially help answer the question if it were combined with other information not seen here, include this Clause in your answer list. * If a question is asking whether something is present or missing, a Clause closely related to the subject of the question that is missing the element is still helpful in answering the question. * If a header Clause is relevant, then list all the Clauses under that header as relevant as well.” (emphasis added) examiner note: the answer may be target and the “if the answer to a question” may add addition information to the target answer as comparative information.
Claim 10. The rejection of the information processing apparatus according to claim 9 is incorporated, wherein: in a case where the check target is different from the comparative information, the instruction content includes an instruction to include a point of difference in the generation sentence. Qadr teaches in [col. 30, ln 54 to col. 32, ln 15] “multiple clauses will contain information highly relevant or necessary to answer the question. If that happens, please list all such relevant clauses in your answer. * If there is/are Clause(s) that only partially answer the question, include them in your answer. * If the answer to a question can be inferred from a Clause, include that Clause in your answer list, even if the Clause does not directly answer the question. * If a Clause contains information that could potentially help answer the question if it were combined with other information not seen here, include this Clause in your answer list. * If a question is asking whether something is present or missing, a Clause closely related to the subject of the question that is missing the element is still helpful in answering the question. * If a header Clause is relevant, then list all the Clauses under that header as relevant as well.” (emphasis added) examiner note: the answer may be target and the “if the answer to a question” may add addition information to the target answer as comparative information.
Claim 11. The rejection of the information processing apparatus according to claim 10 is incorporated, wherein: the generation sentence includes information indicating the point of difference. Qadr teaches in [col. 7, ln 12-35] “the text generation model 276 may be a large language model. The text generation model 276 may be trained to predict successive words in a sentence.” And in [col. 30, ln 18-39] a document may be tokenized into words. Words may then be grouped into phrases and/or sentences based on indicators such as punctuation and semantic content. Sentences may be grouped into sections such as paragraphs or other units. Clauses may then be identified based on the structure… the identification of clauses in a general-purpose non-fiction text may be different from the identification of clauses in a legal contract. Accordingly, the text generation interface system may store domain-specific instructions for identifying clauses in one or more contexts.” (emphasis added) examiner note: words may be grouped into contract clauses that indicating different points in the contract.
Claim 12. The rejection of the information processing apparatus according to claim 1 is incorporated, wherein: the at least one processor further carries out an identification process of identifying a work category of a target; and in the generation process, the at least one processor generates a prompt corresponding to the work category which has been identified in the identification
process. Qadr teaches in [col. 2, ln 65 to col. 3, ln 25] “a set of reference contracts may be parsed to generate or update a database table characterizing the reference contracts along one or more numerical and/or classification dimensions… techniques and mechanisms described herein may be able to review large numbers of documents and to understand them sufficiently well so as to classify them along one or more numerical and/or discrete dimensions.” (emphasis added).
Claim 13. The rejection of the information processing apparatus according to claim 12 is incorporated, wherein: the at least one processor further carries out a revision process of revising the generation sentence in accordance with the work category which has been identified in the identification process. Qadr teaches in [col. 19, ln 25-42] “determining the chat prompt at 806 may involve selecting a chat prompt template configured to instruct the text generation modeling system 270 to revise correspondence. For instance, the user input received at 802 may include a request to revise correspondence. The request may also include information such as the correspondence to be revised, the nature of the revisions requested, and the like. For instance, the request may include an indication that the tone of the letter should be changed, or that the letter should be altered to discuss one or more additional points. Then, the chat response message received at 816 may include novel text for including in the revised correspondence. The novel text may be parsed and incorporated into a revised correspondence letter, which may be included with the chat output message sent at 822 and presented to the user at 824.”
Claim 14. The claim is directed towards an information processing method to implement the steps recited in the apparatus of claim 1, therefore, the claim is similarly rejected as claim 1.
Claim 15. The claim is directed towards a non-transitory storage medium to store the steps recited in the apparatus of claim 1, therefore, the claim is similar rejected as claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHAMED I NAZAR whose telephone number is (571)270-3174. The examiner can normally be reached 10 am to 7 pm Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen Hong can be reached at 571-272-4124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHAMED I NAZAR/Examiner, Art Unit 2178 5/30/2026
/STEPHEN S HONG/Supervisory Patent Examiner, Art Unit 2178
Prosecution Insights