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 .
Election/Restrictions
Claims 7-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/28/2026.
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 1-6 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 discloses a preamble directed to a method, however the body of the claim is directed to a system. It is unclear which statutory category the Applicant intended to claim. For examination purposes, the claims are interpreted as system claims.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They replete with grammatical and idiomatic errors. Correction is required
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-6 rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claim 1 discloses the limitations “a company user using a company smart device”, “a client user using a client smart device”, and “a legal representative using a legal representative smart device”. Company user, client user and legal representative are interpreted to be humans, human organism are excluded from the scope of patentable subject matter.
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 1-6 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is first noted that the claims are directed to at least one potentially eligible category of subject matter (i.e., process and machine, respectively). Thus, Step 1 of the Subject Matter Eligibility test for claims 1-20 is satisfied.
With respect to Step 2A Prong One, it is next noted that the claims recite an abstract idea that falls under the “Certain Methods Of Organizing Human Activity” group within the enumerated groupings of abstract ideas set forth in the MPEP 2106 since the claims set forth steps that recite commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Claim 1 recites the abstract idea generating a sales lead for legal services [004]. In claim 1, this idea is described by the following claim steps:
a company user, the company user creates a low-priced intellectual property service advertisement and the submits the low-priced intellectual property service advertisement to the cloud server application;
a client user to transfer data;
displaying the advertisement and a client user responding to the low-priced intellectual property service advertisement that guide the user through a do-it-yourself (DIY) data entry to create input for an intellectual property service advertised in the low-priced intellectual property service advertisement;
a legal representative transferring data;
create input for an intellectual property service advertised and a client fee and send the input for the intellectual property service advertised to the legal representative and the legal representative receiving input for an intellectual property service advertised and a legal representative fee which is a split of the client fee;
the legal representative creates a legal filing from the input for an intellectual property service advertised and legal representative application files the input for an intellectual property service advertised with a legal filing entity and pays the filing service fee to the legal filing entity and the filing fee is a split of the legal representative fee and the legal filing entity transfers a filing receipt to the a legal representative application and the a legal representative application transfers the legal filing and filing receipt to the cloud server and cloud server application and the cloud server application transfers a legal representative fee and the legal representative fee is a split of the client fee and the cloud application transfers the legal filing and the filing receipt to the client smart device application; and
the client user is now the registered client of the legal representative.
This idea falls within the certain methods of organizing human activity grouping of abstract ideas because it is directed towards commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations). The noted abstract idea is also directed to managing interactions between people such as that required during communications when generating and managing a sales lead for legal services conforms to the requirements of more than one party.
Because the above-noted limitations recite steps falling within the Certain Methods of Organizing Human Activity abstract idea groupings of the MPEP 2106, they have been determined to recite at least one abstract idea when evaluated under Step 2A Prong One of the eligibility inquiry.
Therefore, because the limitations above set forth activities falling within the Certain Methods of Organizing Human Activity abstract idea groupings described in the MPEP 2106, the additional elements recited in the claims are further evaluated, individually and in combination, under Step 2A Prong Two and Step 2B below.
With respect to Step 2A Prong Two, the judicial exception is not integrated into a practical application. The additional elements that fail to integrate the abstract idea into a practical application are:
a cloud server having a cloud server application and a sanction IP address database, and the sanction IP address database is used by the cloud server as a third layer of security;
using a company smart device having a company security application and the company user uses the company security application to log into the company smart device using a company login name and company login password and the company user using company smart device application submits a company login name and a company login password and the company smart device application submits the company smart device IP address to the cloud server and the cloud server application checks the company login name, company login password and the company smart device IP address and if the company smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the company login name and company login password and if the company login name and company login password are in sanctioned IP address database the cloud allows the company smart device to transfer data to the cloud server application;
using a client smart device having a client security application and the client user uses the client security application to log into the client smart device using a client login name and client login password and the client user using client smart device application submits the client login name and client login password and the client smart device application submits the client smart device IP address to the cloud server and the cloud server application checks the client login name, client login password and the client smart device IP address and if the client smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the client login name and client login password and if the client login name and client login password are in sanctioned IP address database the cloud allows the client smart device to transfer data to the cloud server application;
the client smart device having a client smart device application and the client smart device application using a client smart device application;
using a legal representative smart device having a legal representative security application and the legal representative user uses the legal representative security application to log into the legal representative smart device using a legal representative login name and legal representative login password and the legal representative user using legal representative smart device application submits the legal representative login name and legal representative login password and the legal representative smart device application submits the legal representative smart device IP address to the cloud server and the cloud server application checks the legal representative login name, legal representative login password and the legal representative smart device IP address and if the legal representative smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the legal representative login name and legal representative login password and if the legal representative login name and legal representative login password are in the sanctioned IP address database the cloud server application allows the client smart device transferring data to the cloud server application;
a smart device with a smart device application;
However, using a cloud server and smart devices comprising applications amounts to no more than generally linking the use of the abstract idea to a particular technological environment. Generating and managing sales leads can reasonably be performed by pencil and paper until limited to a computerized environment by requiring the recited elements to perform the steps.
These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or computer-executable instructions (software) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), and alternatively serve to link the use of the judicial exception to a particular technological environment. See MPEP 2106.05(f) and 2106.05(h).
In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry, it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted above, the claims as a whole merely describes a method, computer system, and computer program product that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrates the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
For the reasons identified with respect to Step 2A, prong 2, claim 1 fail to recite additional elements that amount to an inventive concept. For example, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea (e.g., a commercial or legal interaction or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more (see MPEP 2106.05(g)). In addition, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application (see MPEP 2106.05(h)).
Dependent claims 2-6 recite the same abstract idea as recited in the independent claims, and when evaluated under Step 2A Prong One are found to merely recite details that serve to narrow the same abstract idea recited in the independent claims accompanied by the same generic computing elements or software as those addressed above in the discussion of the independent claims, which is not sufficient to amount to a practical application or add significantly more, or other additional elements that fail to amount to a practical application or add significantly more, as noted above.
Dependent claims 2 and 5 further limits the abstract idea by introducing a limitation related to describe the service and the service provider. Further describing the specific service or labeling the service provider, does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore, the claims are also non-statutory subject matter.
Dependent claim 3 further limits the abstract idea by linking the judicial exception to a particular field of use by introducing using artificial intelligence to guide the user. Further embellishing that the invention is capable of transit and receive data in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. The examiner views these additional elements as results-oriented steps given that there is no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result are currently present such that this is viewed as equivalent to “apply it” for merely implementing the abstract idea using generic computing components (See Id.). Therefore, the claims are also non-statutory subject matter.
Dependent claim 4 and 6 further limits the abstract idea by introducing the limitations related to data transmission. Transmitting data is a process that could be performed manually until limited by a processor. Further embellishing that the invention is capable of transmitting information in a generic computing environment does not integrate the abstract idea into a practical application or adds significantly more to the abstract idea. Therefore, the claims are also non-statutory subject matter.
The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide high level of generality computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
For more information see MPEP 2106.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Sherman (US Patent 2024/0185203).
Regarding claim 1, Sherman discloses a method for generating legal service leads (abstract), comprising:
a. a cloud server having a cloud server application and a sanction IP address database, and the sanction IP address database is used by the cloud server as a third layer of security to access the cloud server (See Fig. 1 disclosing the cloud computing architecture of the system [0055] In one embodiment, the system 200 is implemented utilizing a centralized computing architecture. In another embodiment, the system 200 is implemented utilizing a distributed computing architecture. In yet another embodiment, the system 200 is implemented utilizing a cloud computing architecture.);
b. a company user using a company smart device having a company security application and the company user uses the company security application to log into the company smart device using a company login name and company login password and the company user using company smart device application submits a company login name and a company login password and the company smart device application submits the company smart device IP address to the cloud server and the cloud server application checks the company login name, company login password and the company smart device IP address and if the company smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the company login name and company login password and if the company login name and company login password are in sanctioned IP address database the cloud allows the company smart device to transfer data to the cloud server application and the company user creates an a low-priced intellectual property service advertisement and the submits the low-priced intellectual property service advertisement to the cloud server application (See Fig, 1 service representative user 500 using device 300 to log in to the system [0052] In one embodiment, a user 50 may be classified as either a client user (“client”) 400 or a service representative user (“rep”) 500. A client user 400 is an individual/collection of individuals requesting a professional service from the web site 100 (e.g., a client/customer, etc.). A service representative user 500 is one of the following: an individual/collection of individuals acting as an administrator, or an individual/collection of individuals assigned/selected to render a professional service requested by a client user 400 (e.g., a professional such as an attorney, support staff for the professional such as a paralegal, etc.). Further see Fig. 4B and 16 and [0232] disclosing the sign in interface for the users.);
c. a client user using a client smart device having a client security application and the client user uses the client security application to log into the client smart device using a client login name and client login password and the client user using client smart device application submits the client login name and client login password and the client smart device application submits the client smart device IP address to the cloud server and the cloud server application checks the client login name, client login password and the client smart device IP address and if the client smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the client login name and client login password and if the client login name and client login password are in sanctioned IP address database the cloud allows the client smart device to transfer data to the cloud server application (See Fig, 1 client user 400 using device to log in to the system 300 [0052] In one embodiment, a user 50 may be classified as either a client user (“client”) 400 or a service representative user (“rep”) 500. A client user 400 is an individual/collection of individuals requesting a professional service from the web site 100 (e.g., a client/customer, etc.). A service representative user 500 is one of the following: an individual/collection of individuals acting as an administrator, or an individual/collection of individuals assigned/selected to render a professional service requested by a client user 400 (e.g., a professional such as an attorney, support staff for the professional such as a paralegal, etc.). Further see Fig. 4B and 16 and [0232] disclosing the sign in interface for the users.);
d. the client smart device having a client smart device application and the client smart device application displaying the advertisement using a client smart device application and a client user responding to the low-priced intellectual property service advertisement using the client smart device application that guides the user through a do-it-yourself (DIY) data entry to create input for an intellectual property service advertised in the low-priced intellectual property service advertisement ([0061] In one embodiment, the applications 215 comprise a questionnaire generator 255 configured to generate a questionnaire for a client user 400. Specifically, in response to a request from a client user 400 for a professional service, the questionnaire generator 255 generates a customized questionnaire comprising one or more questions selected from one or more question banks 232 (FIG. 3) maintained on the storage devices 220. The questions of the questionnaire are relevant to the professional service requested. The questionnaire is presented to the client user 400. The questionnaire simplifies the process of gathering information necessary for performance of the professional service requested. Specifically, the questionnaire enables the client user 400 to flow through an engaging and intuitive flow of steps that collects, from the client user 400, information necessary for performance of the professional service requested.);
e. a legal representative using a legal representative smart device having a legal representative security application and the legal representative user uses the legal representative security application to log into the legal representative smart device using a legal representative login name and legal representative login password and the legal representative user using legal representative smart device application submits the legal representative login name and legal representative login password and the legal representative smart device application submits the legal representative smart device IP address to the cloud server and the cloud server application checks the legal representative login name, legal representative login password and the legal representative smart device IP address and if the legal representative smart device IP address is in the sanctioned IP address database on the cloud server the cloud server application processes the legal representative login name and legal representative login password and if the legal representative login name and legal representative login password are in the sanctioned IP address database the cloud server application allows the client smart device to transfer data to the cloud server application ([052] A service representative user 500 is one of the following: an individual/collection of individuals acting as an administrator, or an individual/collection of individuals assigned/selected to render a professional service requested by a client user 400 (e.g., a professional such as an attorney, support staff for the professional such as a paralegal, etc.). See also Fig. 4b, 16 and 19);
f. the client smart device having a client smart device applications sends the create input for an intellectual property service advertised and a client fee to a cloud server having a cloud server application and the cloud service application sends the input for the intellectual property service advertised to the legal representative smart device and the legal representative smart device application receiving input for an intellectual property service advertised and a legal representative fee which is a split of the client fee (See Fig. 17 and [0235] FIG. 17 illustrates a flowchart of an example process 910 for processing a request for a professional service, in accordance with an embodiment of the invention. In process block 911, receive a request for a professional service. In process block 912, generate and display a questionnaire based on the professional service requested. In process block 913, adapt the questionnaire displayed based on one or more responses to one or more questions of the questionnaire. In process block 914, determine whether the questionnaire has been completed. If the questionnaire has not been completed, return to process block 914.);
g. the legal representative using a legal representative smart device having the legal representative application creates a legal filing from the input for an intellectual property service advertised and legal representative application files the input for an intellectual property service advertised with a legal filing entity and pays the filing service fee to the legal filing entity and the filing fee is a split of the legal representative fee and the legal filing entity transfers a filing receipt to the a legal representative application and the a legal representative application transfers the legal filing and filing receipt to the cloud server and cloud server application and the cloud server application transfers a legal representative fee and the legal representative fee is a split of the client fee and the cloud application transfers the legal filing and the filing receipt to the client smart device application (See Fig. 19 and [0248] FIG. 19 illustrates a flowchart of an example process 940 for processing a request to prepare and file a trademark application, in accordance with an embodiment of the invention. In process block 941, receive a request from a client to prepare and file a trademark application. In process block 942, provide the client with a trademark questionnaire to complete. In process block 943, in response to receiving the completed trademark questionnaire from the client, request a payment of fees for preparing and filing a trademark application from the client. In process block 944, in response to receiving the payment of fees from the client, prepare a trademark application confirmation (TAC) document based on the completed trademark questionnaire, and forward the TAC document to a paralegal for review. In process block 945, determine whether the client requested a virtual consultation with an attorney. If the client did not request a virtual consultation, proceed to process block 947. If the client requested a virtual consultation, proceed to process block 946 to schedule a virtual consultation between the client and the attorney, and then proceed to process block 947.); and
h. the client user is now the registered client of the legal representative (See Fig. 19 and 20).
Regarding claim 2, Sherman discloses, wherein the low-priced intellectual property service is selected from the group consisting of patent filing, copyright filing, and trademark filing ([0249] In process block 947, forward the reviewed TAC document from the paralegal to the attorney for review. In process block 948, forward the reviewed TAC document from the attorney to the client for client approval. In process block 949, in response to receiving client approval of the TAC document, prepare a trademark application for filing based on the TAC document. In process block 950, file the trademark application with the United Stated Patent and Trademark Office (USPTO). In process block 951, monitor status of the filed trademark application at USPTO, and provide the client with status updates of the filed trademark application.).
Regarding claim 3, Sherman discloses, wherein the data input application utilizes artificial intelligence to guide the user through the DIY data entry ([0076] The audit of the user responses may be performed automatically or manually. To perform the audit automatically, the auditing unit 245 invokes artificial intelligence (AI) software to review the user responses. In one embodiment, the auditing unit 245 comprises AI software. In another embodiment, the auditing unit 245 may interface/communicate with third-party AI software. To perform the audit manually, the auditing unit 245 forwards the user responses to at least one service representative user 500 for review.).
Regarding claim 4, Sherman discloses sending a notification to the client user with the name and contact information of the selected service provider and the legal filing and filing receipt ([0249] In process block 947, forward the reviewed TAC document from the paralegal to the attorney for review. In process block 948, forward the reviewed TAC document from the attorney to the client for client approval. In process block 949, in response to receiving client approval of the TAC document, prepare a trademark application for filing based on the TAC document. In process block 950, file the trademark application with the United Stated Patent and Trademark Office (USPTO). In process block 951, monitor status of the filed trademark application at USPTO, and provide the client with status updates of the filed trademark application.).
Regarding claim 5, Sherman discloses wherein the service provider becomes the attorney or agent of record and receives any notice to respond to any office action generated by the filing ([0249] In process block 947, forward the reviewed TAC document from the paralegal to the attorney for review. In process block 948, forward the reviewed TAC document from the attorney to the client for client approval. In process block 949, in response to receiving client approval of the TAC document, prepare a trademark application for filing based on the TAC document. In process block 950, file the trademark application with the United Stated Patent and Trademark Office (USPTO). In process block 951, monitor status of the filed trademark application at USPTO, and provide the client with status updates of the filed trademark application.).
Regarding claim 6, Sherman discloses providing a nominal fee to the legal representative for their filing services ([0236] If the questionnaire has been completed, proceed to process block 915 to display a graphical user interface (GUI) that facilitates payment of fees for the professional service requested.).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tucker , US 20240320774 Legal Service Booking Platform A legal event booking interface that provides for selection of a legal service provider including between a court reporter digital reporter, stenographer, videographer, interpreter (not shown), or a combination thereof, and selection means for selecting and reserving a job location.
Jessen, US 20160350886, Method And System For Evaluating Intellectual Property, Described herein is an architecture that aggregates intellectual property data including but not limited to patent data (utility patents, design patents, plant patents, business method patents, and applications therefore); trademarks (registered work marks, registered designation marks, and registered combination marks and applications therefore [both pending or “dead”]); and copyrights, and financial data, analyzes that data, and presents it in user defined ways that are intuitive to non-IP professionals, such as inventors, product managers, executives, analysts, and financial professionals.
K. n. Zhou, J. Zhang and J. Wang, "Research and Design of Cloud-Based Smart Legal Service Platform," 2022 IEEE 6th Information Technology and Mechatronics Engineering Conference (ITOEC), Chongqing, China, 2022, pp. 2017-2020
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA C SANTOS-DIAZ whose telephone number is (571)272-6532. The examiner can normally be reached Monday-Friday 8:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at 571-270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA C SANTOS-DIAZ/ Primary Examiner, Art Unit 3629
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