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 .
Response to Arguments
Applicant's arguments filed 23 October 2025 with respect to the 101 rejection have been fully considered but they are not persuasive. Applicant argues on pages 9-11 of the Remarks that the claims do not as a whole recite an abstract idea, specifically that the claims merely involve an abstract idea and are not directed to the identified abstract ideas. The Examiner disagrees that the claims are similar to the analysis provided by example 37 because the training and use of a machine learning algorithm are specifically recited, but in the current claims no specific details of a machine learning algorithm are disclosed and automating natural language search which is typically done manually is not similar to example 37. Additionally, analyzing a script for legal clearance is an explicitly recited commercial or legal interaction classified under organizing human activity as well as mitigating risk, which is a fundamental economic practice. Applicant argues on pages 11-13 of the Remarks that the claims are integrated into a practical application, as a whole, specifically that the claimed technology is directed to an improvement in script analysis or another technology or field. The Examiner disagrees because the claim is in the area of script analysis or natural language processing of a document and the improvement is in the abstract idea itself, not another technology or technical area. Additionally, the Applicant’s alleged improvements must be present in the claims and but for the user interface, multiple steps in the method can be performed mentally or manually by a human such as defining characteristic prompts and applying the models. The claims are not integrated into a practical application because the additional elements of a model(s) and interface represent the use of a computer as a tool to perform an abstract idea similar to Electric Power group and TLI, see MPEP 2106.04(a)(2). Applicant argues on pages 13-14 of the Remarks that the claims contain significantly more than the abstract idea, specifically the claimed solution automatically generates an entity identification prompt comprising plain language text. The Examiner disagrees that the additional elements provide significantly more and that the claims contain a specific solution because the entity extraction or named entity recognition method is merely performing the programmed function of natural language processing with a computer to implement a manual or mental process and the abstract idea.
Applicant’s arguments, see pages 14-16, filed 23 October 2025, with respect to 103 rejection have been fully considered and are persuasive. The 103 rejection of claims 1-20 of 8 August 2025 has been withdrawn.
The cited references fail to teach or disclose at least “evaluating the one or more script segments to automatically generate an entity identification prompt comprising plain language text for triggering identification of one or more entities within the one or more script segments”.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In the instant case, claim 1 is directed to a “method for automatically analyzing a script for legal clearance while retaining a contextual analysis of the script”.
Claim 1 is directed to the concept of “using rules to analyze risk” and “collecting information, analyzing it, and displaying certain results of the collection and analysis”, which is grouped under “organizing human activity… fundamental economic practice (mitigating risk is a form of copyright and intellectual property risk) and commercial or legal interactions (screening for intellectual property risk or infringement is a legal obligation)” and a mental process (collecting information, analyzing it, and displaying certain results is similar to Electric Power Group and typically performed mentally or manually by a human) in prong one of step 2A (See MPEP 2106.04(a)(2)). Claim 1 recites automatically identifying one or more script elements within the script based on one or more of a script property and a script content; generating one or more script segments from the one or more script elements, evaluating the one or more script segments to automatically generate an entity identification prompt comprising plain language text for triggering identification of one or more entities within the one or more script segments, for each script segment, evaluating the script segment with one or more entity identification data models configured to receive the entity identification prompt to automatically identify the one or more entities within the script segment, generating a set of entities from the one or more entities identified from the one or more script segments; defining a characteristics prompt for each entity of the set of entities, the characteristics prompt comprising a set of prompts for extracting from the script a set of entity characteristics related to an entity type and the entity; for each entity of the set of entities, evaluating the script with one or more entity characteristics data models configured to received the associated characteristics prompt to automatically extract the set of entity characteristics from the script, receiving a user feedback in respect of one or more of the set of entities and the script; and identifying a set of clearance searches to be performed for each entity according to the entity type. Accordingly, the claim recites an abstract idea (See MPEP 2106.04(a)(2)).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See MPEP 2106.04(d)), the additional elements of the claim such as a user interface represent the use of a computer as a tool to perform an abstract idea and/or does no more than generally link the abstract idea to a particular field of use (MPEP 2106.05(f)&(h)). Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. implement) the acts of “using rules to analyze risk” and “collecting information, analyzing it, and displaying certain results of the collection and analysis”.
When analyzed under step 2B (See MPEP 2106.05), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself. Viewed as a whole, the combination of elements recited in the claims merely describe the concept of “using rules to analyze risk” and “collecting information, analyzing it, and displaying certain results of the collection and analysis” using computer technology (e.g. a user interface). Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Dependent claims 2-10 and 12-20 do not remedy the deficiencies of the independent claims and are rejected accordingly. The dependent claims further refine the abstract idea of the independent claims and do not integrate the abstract idea into a practical application In this case, all claims have been reviewed and are found to be substantially similar and linked to the same abstract idea (see Content Extraction and Transmission LLC v. Wells Fargo (Fed. Cir. 2014)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cucerzan US 2015/0269612 Ackermann US 11755633
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DAVID P SHARVIN whose telephone number is (571)272-9863. The examiner can normally be reached M-F 9 am - 5 pm EST.
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, Ryan Donlon can be reached at 571-270-3602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID P SHARVIN/Primary Examiner, Art Unit 3692