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 .
Status of Claim
The office action is being examined in response to the application filed by the applicant on July 25, 2024.
Claim 1-20 are pending and have been examined.
This action is made NON-FINAL.
Priority
Acknowledgment is made of applicant’s claim for priority under 35 U.S.C. 119(e) to Provisional Application No. 65/529,680, filed on July 29, 2023.
Specification
A substitute specification in the instant non-provisional application and in the provisional application number 65/529,680 excluding the claims are required pursuant to 37 CFR 1.125(a). The substitute replacement is necessary because the specifications presented in the provisional and non-provisional applications do not comply with 37 C.F.R. 1.52(a)(1)(iv) and (v), 37 C.F.R. 1.52(b)(2)(ii), and 37 C.F.R. 1.52(b)(6).
A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.
Claim Objections
Claim 4 is objected to because of the following informalities: “comprising the further comprising the steps of” in the preamble. For the purposes of compact prosecution, the Examiner is interpreting the claim to recite: “further comprising the steps of.”
Claims 7, 17 and 19 are objected to because of the following informalities: system system” in the preamble. For the purposes of compact prosecution, the Examiner is interpreting the claims to recite: “system.”
Appropriate correction is required.
Duplicate Claim
Applicant is advised that should claim 8 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 claim 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 claim particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 2, 3, 5, 7, 16, and 18 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 limitation "the most relevant" in the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the Examiner is interpreting this to be “most relevant.”
In claims 1, 2, 7, and 18: The terms “references determined to be the most relevant to the query” and “at least one related issue related to the at least selected issue or fact.” in claim 1, “search results page with relevance based on the original query in claim 2, “at least one search result is an automated semantic search result relevant to the at least one icon” and “at least one relevant issue or fact for at least one search result” in claim 7, and “any relevant search results” in claim 18 are relative terms which renders the claim indefinite. The terms relevant, relevancy and related are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification discloses the limitation “relevant” in ¶ [0046] disclosing that a relevant reference may be determined by any pre-programmed methodology known in the art, ¶ [0047] relevant results are found by analyzing the broader meaning of a query, and in ¶ [0064] relevant references are returned “based on semantic understanding of the initial query and updated legal fact retrievals with legal issues and ranking factors available upon request.” The specification does not disclose and the claims do not recite how relevance or relevant are determined. A person having ordinary skill in the art would not be apprised of the metes and bounds for performing claim functions to achieve these claim limitations.
For the purposes of compact prosecution, the Examiner is interpreting the terms as not positively recited in the claims. The claim limitations are being interpreted as “selecting a list of one or more references determined by the query” and “retrieving and displaying at least one issue from the at least selected issue or fact” in claim 1; “search results page based on the original query” in claim 2; “at least one search result is an automated semantic search result from the icon” and “at least one issue or fact for at least one search result” in claim 7, and “any search results” in claim 18.
Claim 3 recites the limitation "the most similar" in the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the Examiner is interpreting this to be “a most similar.”
Claim 5 recites the limitation "the highest similarity" in the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the Examiner is interpreting this to be “a highest similarity.”
Claim 7 recites the limitation "the text" and "the provisional response" in the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the Examiner is interpreting this to be "a text" and "a provisional response.”
Claim 16 recites the limitation "the surrounding routine text" in the claim. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution, the Examiner is interpreting this to be “the routine text.”
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.
Claim 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent Claim:
Regarding Claim 1: The claim recites: provide software system, provide a computer device, access the software, enter a query, select most relevant reference list, display search result, display ranking factor, retrieve relevant issue/fact, display relevant issue/fact select issue/fact, transfer to result location, retrieve related issue, and display related issue, which are in the abstract idea category of “Mental Processes,” or processes that can be performed in the human mind or with the aid of pen and paper, including observations, evaluations, judgments, and opinions. The claim recites the process of searching for, retrieving, and displaying data on a topic, i.e. processes that have a long history of performance by humans searching for and ranking relevant data, which is an abstract idea in the category of "Certain Methods of Organizing Human Activity" in the subcategory of managing personal behavior. The claim recites an abstract idea.
Step 2A Prong 2: The claim recites additional computer elements: system software, a computer device, and a user interface. These additional computer elements are recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic computing structures accessing generic software at a high level of generality without revealing advances or improvements to the computing structures themselves. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic computing structures (MPEP 2106.05(f)).
The claim recites additional element: an AI-based system. This additional element is recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic AI functionality without specifying what the AI does in the system. The claim does not reveal advances to AI. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic AI (MPEP 2106.05(a) and (f)).
The claim also recites claim limitations that are merely data or groups of data, i.e. mere characterizations of data. Characterized data is non-functional descriptive information that is not patentably distinct.
The claim recites: display a search result, display a relevant issue/fact, display a related issue, retrieve relevant issues, retrieving related issues, selecting a list of relevant references, and select an issue/fact, which are merely displaying, selecting, or receiving data. The specification does not reveal advances to the technologies of data display, data transmission, or data selection, or graphic user interfaces.
The claimed functions are recited at a high level of generality, they are simply applying the abstract idea to the technological field of legal research, without adding meaningful functions, additional elements, or limitations. The claim is focused on the nature of the data being manipulated – i.e., the descriptive nature of the data. The claim is also focused on the recited outcome of functional limitations, the intended results, without detailing the manner in which the claim performs the functions. This amounts to a claim without an inventive concept beyond the abstract ideas. Therefore, the claim is generally linking the abstract idea to a technological field of AI based legal research, without claiming the AI, algorithms, or machine learning models, or their functions, i.e. without exhibiting some other meaningful approach such that the claim as a whole are not more than a drafting effort designed to monopolize the exception, which is not indicative of additional elements that integrate the abstract idea of the claim, as a whole, into a practical application (MPEP 2016.05(e) and (h)). The claim as a whole, while looking at additional elements individually and in combination, do not integrate the judicial exceptions into a practical application.
Step 2B: The analysis above for Step 2A Prong 2 is commensurate with the analysis for this Step 2B, such that the claim, as a whole, do not include additional elements that are sufficient to amount to significantly more than the judicial exception when taken individually and in combination (MPEP 2106.05).
Regarding Claim 7: The claim recites: provide software system, provide a computer device, access the software, submit a prompt, produce a provisional document, evaluate text, identify routine and pivotal text, convert pivotal text to an icon, display icon, activate (click) icon (start automated search), open search result display, provide ranking factor, provide relevant issue/fact, review reference, capture selected text, move selected text, choose placement area of document, rate inserted text, fill remaining icons with text, and update draft document, which are in the abstract idea category of “Mental Processes,” or processes that can be performed in the human mind, including observations, evaluations, judgments, and opinions. These are merely research and document building tasks which are processes that have a long history of performance by humans searching for data with relevancy to a topic and searching for deeper information on the topic using found data, and then forming a new document pertinent to search and found data, which is an abstract idea in the category of "Certain Methods of Organizing Human Activity" and subcategory of managing personal behavior. The claim recites an abstract idea.
Step 2A Prong 2: The claim recites additional computer elements: system software, a computer device, and a user interface, i.e. a graphical user interface that includes a display panel or a window. These additional computer elements are recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic computing structures accessing generic software without revealing advances or improvements to the computing structures themselves. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic computing structures (MPEP 2106.05(f)).
The claim recites additional elements: generative AI, automated semantic search, and an AI-based system. These additional elements are recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic these generic elements without specifying what the algorithms, AI, or machine learning models do, i.e. how they perform the functions in the claim. The specification does not reveal advances or improvements to AI, algorithms, or machine learning, semantic analysis, generative AI, natural language processing, or semantic search. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic AI (MPEP 2106.05(a) and (f)).
The claim also recites claim limitations that are merely data or groups of data, which are merely characterizations of data. Characterized data is non-functional descriptive information that is not patentably distinct.
The claim recites: display a search result, display an icon, display search result, submit a prompt, activate icon (select icon), capture selected text, and drag and drop text, which are merely displaying, selecting, moving, or transmitting data. The specification does not reveal advances to the technologies of data display, data transmission, drag and drop, selection of data, or graphic user interfaces.
The claimed functions are recited at a high level of generality, they are simply applying the abstract idea to the technological field of legal research, without adding meaningful functions, additional elements, or limitations. The claim is focused on the nature of the data being manipulated – i.e., the descriptive nature of the data. The claim is also focused on the recited outcome of functional limitations, the intended results, without detailing the manner in which the claim performs the functions. This amounts to a claim without an inventive concept beyond the abstract ideas. Therefore, the claim is generally linking the abstract idea to a technological field, without exhibiting some other meaningful approach such that the claim as a whole is not more than a drafting effort designed to monopolize the exception. The additional elements do not integrate the abstract idea of the claim, as a whole, into a practical application (MPEP 2016.05(e) and (h)).
Step 2B: The analysis above for Step 2A Prong 2 is commensurate with the analysis for this Step 2B, such that the claim, as a whole, do not include additional elements that are sufficient to amount to significantly more than the judicial exception when taken individually and in combination.
Regarding Claim 16: The claim recites: provide software system, provide a computer device, access the software, embed natural language prompts, determine if cached (saved) responses are available, transmit responses, transmit request, generate response text, determine if text is routine or pivotal, generate an embedding for pivotal text, generate an embedding for routine text, retrieve search results, consolidate response with result data, and transmit response, which are in the abstract idea category of “Mental Processes,” or processes that can be performed in the human mind, including observations, evaluations, judgments, and opinions. These are merely research and document building tasks which are processes that have a long history of performance by humans searching for data with relevancy to a topic, and then forming a new document pertinent to search and text in the found data, which is an abstract idea in the category of "Certain Methods of Organizing Human Activity" and subcategory of managing personal behavior. The claim recites an abstract idea.
Step 2A Prong 2: The claim recites additional computer elements: system software, a computer device, and a user interface, i.e. a graphical user interface that includes a display panel or a window, a backend, an API, and a database. These additional computer elements are recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic computing structures accessing generic software at a high level of generality without revealing advances or improvements to the computing structures themselves. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic computing structures (MPEP 2106.05(f)).
The claim recites additional elements: natural language prompts, semantic search, and an AI-based system. These additional elements are recited in the claim and disclosed in the specification with a high level of generality. The claim is simply reciting generic natural language prompts, semantic search, AI based system functionality, i.e. algorithms and/or machine learning models, without specifying how the functions are performed, or what the algorithms or machine learning do in the system. This amounts to a recitation of generic software, algorithms, machine learning models, semantic search, and AI functions without revealing advances or improvements to AI, data caching, semantic searching, semantic analysis, algorithms, machine learning, short term memory functions, natural language, or embeddings. These recitations amount to “apply it,” mere instructions to apply the abstract idea using generic AI (MPEP 2106.05(a) and (f)).
The claim also recites claim limitations that are merely data or groups of data, which are non-functional descriptive information that is not patentably distinct.
The claim recites: display transmit cached response, transmit request, retrieve semantic search results, consolidate responses with search data, and transmit consolidated response. The specification does not reveal advances to the technologies of data display, data transmission, data consolidation, or graphic user interfaces.
The claimed functions are recited at a high level of generality, they are simply applying the abstract idea to the technological field of legal research, without adding meaningful functions, additional elements, or limitations. The claim is focused on the nature of the data being manipulated – i.e., the descriptive nature of the data. The claim is also focused on the recited outcome of functional limitations, the intended results, without detailing the manner in which the claim performs the functions. This amounts to a claim without an inventive concept beyond the abstract ideas. Therefore, the claim is generally linking the abstract idea to a technological field without exhibiting some other meaningful approach such that the claim as a whole is not more than a drafting effort designed to monopolize the exception, which is not indicative of additional elements that integrate the abstract idea of the claim, as a whole, into a practical application (MPEP 2016.05(e) and (h)).
The claim as a whole, while looking at additional elements individually and in combination, do not integrate the judicial exception into a practical application.
Step 2B: The analysis above for Step 2A Prong 2 is commensurate with the analysis for this Step 2B, such that the claim, as a whole, do not include additional elements that are sufficient to amount to significantly more than the judicial exception when taken individually and in combination (MPEP 2106.05).
Dependent Claim:
Claim 2 recites limitations that further embody the abstract idea categories of the independent claim. The claim recites: transfer to a new user interface page, display search results, display relevance, determine relevance based on query and issue/fact, which are additional functions in the abstract ideas category of “mental processes” and "Certain Methods of Organizing Human Activity" for managing personal behaviors because they further perform the tasks of data research, an existing human task. The additional element is the AI, which is recited in the claim and disclosed in the specification as a general-purpose AI at a high level of generality. The claim includes data that is characterized, i.e. non-functional descriptive information that is not patentably distinct. The specification does not reveal that the invention makes advances to graphical user interfaces (GUI) or AI. The claim focuses on the descriptive nature of the data and the functional claim limitations without detailing how the claim performs the functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 3 recites limitations that further embody the abstract idea categories of the independent claim. The claim recites: find a reference that is the most similar to a selected reference, mirroring the abstract idea categories of “mental processes” and "Certain Methods of Organizing Human Activity" because it is further performing the tasks of data research that is an existing human task. The additional elements are AI based system, vector databases, databases, algorithms, semantic search functionality, and LLM AI software, which are all recited in the claim and disclosed in the specification at a high level of generality. The claim includes data that is characterized, i.e. non-functional descriptive information that is not patentably distinct. The specification does not reveal that the invention makes advances to AI based system, vector databases, embeddings, similar embeddings, databases, algorithms, semantic search functionality, semantic analysis, machine learning techniques, large language models, AI, or LLM AI software. The claim focuses on the descriptive nature of the data and finding the most similar references, and the functional claim limitations without detailing how the claim or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 4: The claim does not recite an abstract idea as it merely recites providing services, systems, a user interface, backend, and API. The backend, systems, and computerized devices are merely generic recitations of general-purpose computing structure, recited at a high level of generality. The claim performs no functions, instead it recites actions taken by the system that are broad and do not limit the providing step, the only function recited, or the limitations of the independent claim. These limitations carry no patentable weight and it is unclear how the limitations could be protected from infringement. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 5 recites limitations that further embody the abstract idea categories of the independent claim. The claim recites functions: an embedding function, an analyzing function, an identifying function, a similarity function, and a processing function, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because they further perform the existing human task of data research. The claim also recites three transmitting functions and a retrieving function, however, the specification does not reveal advances to data transmission. The additional elements are AI based system, API, user interface, backend, and vector database, which are all recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using these additional elements as a tool. The claim includes data that is characterized, i.e. non-functional descriptive information that is not patentably distinct. The specification does not reveal that the invention makes advances to AI based system, vector databases, caching (saving) responses, embeddings, databases, algorithms, semantic search functionality, semantic analysis, machine learning techniques, large language models, AI, or LLM AI software. The claim focuses on the descriptive nature of the data and finding the most similar data to the query. The claim recites functional claim limitations without detailing how the claim performs or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 6 recites limitations that further embody the abstract idea categories of the independent claim. The claim recites: an analyze results function, an update database function, and a cache (saving) function, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of data analysis, identification, and saving. The additional elements are AI based system, databases, and storage, which are all recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using these additional elements as a tool. The claim includes data that is characterized, i.e. non-functional descriptive information that is not patentably distinct. The specification does not reveal that the invention makes advances to computer functioning, technology, or technical fields. The claim focuses on the descriptive nature of the data and finding the most similar data to the query. The claim recites functional claim limitations without detailing how the claim performs or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claims 8 and 11: These claims are not abstract ideas as they merely characterize the icon from claim 7 to be a puzzle piece shape, where claim 8 recites they are in the configuration of, and claim 11 recites they are in the form of. The specification does not draw a difference between configuration and form. This is merely a characterization of a data limitation, i.e. non-functional descriptive information that is not patentably distinct. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 9 recites limitations that further embody the abstract idea categories of the independent claim: send user to results user interface, which is in the abstract idea category of mental processes and "Certain Methods of Organizing Human Activity" because it further performs human tasks of moving between user interface pages, i.e. from clicking a searched link. There are no additional elements that can be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 10: The claim recites functions: capture text function, move text function, highlight text function, and drop text function, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because they further perform human tasks of moving between user interface pages, i.e. drag and drop functionality. The additional element is the “window” graphical user interface, which cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 12: The claim does not recite an abstract idea as it merely characterizes the rating scheme further, reciting that the scheme is color-coded and that each of three colors signals a different meaning about how data fits the document. The claim performs no functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 13 recites limitations that further embody the abstract idea categories of the independent claim: activate (click) an icon, utilize an LLM and utilize an NLP technique, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of clicking a link to search. The additional elements are AI based system, LLM, and NLP technique, which are all recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using these additional elements as a tool. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 14: recites limitations that further embody the abstract idea categories of the independent claim: conduct iterative learning, conduct refinement, and conduct continuous improvement, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of continuous improvement and learning. The additional element is the AI based system, which is recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using this additional element as a tool. This claim recites refining and improving a systems’ ability to understand and generate, therefore, it is claiming an intended result, a refined and improved ability, which is not something with clear metes and bounds that can be protected from infringement, thus, while the limitations are an abstract idea, the claim does positively recite nor perform any functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 15 recites limitations that further embody the abstract idea categories of the independent claim: complete a draft, download, save, copy, or share draft, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task as named. The specification clearly discloses that the user performs these tasks, i.e. the user completes, downloads, saves, copies, or shares the draft. The additional element is the AI based system, which is recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using this additional element as a tool. The specification does not reveal that the invention makes advances to the functioning of a computer, or to any other technology or technical field. The claim focuses on the descriptive nature of the data and the user manipulations of the data. The claim recites functional claim limitations without detailing how the claim or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 17 recites limitations that further embody the abstract idea categories of the independent claim: convert text to icon, which is in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of converting text to a clickable link. The additional elements are the AI based system and a user interface, which are recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using this additional element as a tool. does not reveal that the invention makes advances to the functioning of a computer, or to any other technology or technical field. The claim focuses on the descriptive nature of the data. The claim recites functional claim limitation without detailing how the claim performs or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 18 recites limitations that further embody the abstract idea categories of the independent claim: display a response and display a link to data, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of displaying data with clickable hyperlinks. The additional element is the AI based system, which is recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using this additional element as a tool. The specification does not reveal that the invention makes advances to the functioning of a computer, or to any other technology or technical field. The claim focuses on the descriptive nature of the data and the user manipulations of the data. The claim recites functional claim limitations without detailing how the claim or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 19 recites limitations that further embody the abstract idea categories of the independent claim: interact with hyperlinks and finalize a document, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of choosing data to replace with better data throughout a document. The additional element is the AI based system, which is recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using this additional element as a tool. The specification does not reveal that the invention makes advances to the functioning of a computer, or to any other technology or technical field. The claim focuses on the descriptive nature of the data and the user manipulations of the data. The claim recites functional claim limitations without detailing how the claim performs or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
Claim 20 recites limitations that further embody the abstract idea categories of the independent claim: provide an LLM and generate discrete document text, which are in the abstract idea categories of mental processes and "Certain Methods of Organizing Human Activity" because it further performs the existing human task of generating text for a document section. The additional elements are the AI based system and the LLM technology, which are recited in the claim and disclosed in the specification at a high level of generality, such that the claim is merely implementing the abstract idea using these additional elements as a tool. The specification does not reveal that the invention makes advances to the functioning of a computer, or to any other technology or technical field. The claim focuses on the descriptive nature of the data and the user manipulations of the data. The claim recites functional claim limitations without detailing how the claim performs or the additional elements perform the recited functions. These limitations cannot be relied upon to integrate the claim as a whole, while looking at additional elements individually and in combination, into a practical application or significantly more.
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)(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.
Claim 1-2 are rejected under U.S.C. § 102(a)(1) as being anticipated by Rosenoff, US20120117048A1.
Regarding claim 1. Rosenoff discloses: A method of providing and using an Al-based legal research system, comprising the steps of:
providing system software, [0029] (provide software executed to perform the functions),
providing at least one computerized device for running the system software, [0027] (an access device, such a computer)
accessing the software, [Figures 1 and 5] (access device accesses the software functions);
entering a query via a user interface into the at least one computerized device, [0032] (user enters a query on an access device),
selecting a list of one or more references determined to be the most relevant to the query, [0062-0063] (system determines most relevant results and selects reference),
displaying at least one search result and displaying at least one ranking factor for each search result, [0163-0164] (ranked results are displayed)
retrieving and displaying at least one relevant issue, fact, or both for at least one search result, [0065] (additional topics are added), [0066] (user clicks presented results showing it carries more relevancy to user),
selecting at least one issue or fact among the at least one search result and transferring to its location, [0066] “an individual user clicks through from a search result into a particular document page,”
and retrieving and displaying at least one related issue related to the at least selected issue or fact. [0138] (related issues and facts are appended to the query, which is presented to the user to refine), [0127] (updated ranking occurs in real-time according to selection of related issues), [0164] (search results are retrieved and presented to user who may interact with the data),
Regarding Claim 2: Rosenoff discloses: A method of providing and using an Al-based legal research system according to claim 1, comprising the further step of: transferring to a new automated search results page with relevance based on the original query and the first at least one issue or fact. [0077] (certain results are combined with other results prior to display so they may be rendered in a visually distinct manner).
Claim 7-9 and 11-20 are rejected under U.S.C. § 102(a)(1) as being anticipated by Aberle, US20240062019A1.
Regarding Claim 7. Aberle discloses: A method of providing and using an Al-based legal work product drafting system, comprising the steps of:
providing system software, [0035] (software programs),
providing at least one computerized device for running the system software, [0034] (computer system),
accessing the software, [0036] (processor is programmed to execute and perform the software functions),
submitting a prompt to draft a document, [0030] (a document request arrives at a business, the business submits a prompt with requirements to draft a response to the request)
using generative AI to produce a provisional response document to the prompt, [0031] “may identify and label sections of proposals that win their corresponding contracts in order to serve as the basis for automatically generating natural language text and other types of content in response to a given RFP.”
evaluating the text of the provisional response document and identifying both routine portions of text and pivotal portions of text, [0063] “a machine learning model trained to identify and label sections of an unstructured document,” [0064] “A word embedding from the human-annotated and labeled sections may be compared to the word embeddings generated from the remaining portions of the unstructured documents.” (pivotal sections are discrete and routine is the remaining text),
converting each piece of any pivotal text in the provisional response document to an icon, wherein each icon is displayed within the provisional response document, [0015] “The system may generate a generative stitching interface for displaying, to a user, the different selectable candidate response portions,” [0075] “The generative writing interface may therefore display unique and discrete writing tasks to the user in the form of a task list that may include ... data relating to one or more discrete requirements of the requirement specification.” [0094] “the user is provided functionality to work on any given requirement in the RDO by clicking on a discrete novel requirement section in the list of available sections,” [0102] “Interaction area 630 may show the discrete requirement for the selected section as well as selectable candidate response portions that were automatically generated.”
activating at least one icon to access at least one piece of pivotal text, [0094] “the user is provided functionality to work on any given requirement in the RDO by clicking on a discrete novel requirement section in the list of available sections,”
transferring a user via the icon to either a display panel or window displaying at least one search result, [Figure 6C] (interface where user clicks requirement and is transferred to the interface at Fig. 6D), [Figure 6D] (display panel with results), [0080] “The search service returns relevant output that includes a set of ranked document matches, scored based on how semantically related they are to the natural language transformer understanding of the initial input query”
wherein the at least one search result is an automated semantic search result relevant to the at least one icon from the provisional response document, [0101] “620 may show a listing of artifacts. Each artifact represents response portions that may be semantically relevant to a requirement of a selected section in the interaction area 610,”
providing at least one ranking factor within each search result, [Figure 5] (top ranking relevant content),
providing at least one relevant issue or fact for at least one search result, [Figure 5] (top ranking relevant content),
reviewing at least one reference from the at least one search result, [0097] “autogenerated textual content and the references that link the autogenerated and human edited paragraphs back to the original source content contained in the system document object store 111,” [Figure 5] (user selected relevant content, where user selected implicitly shows user review of content),
capturing and moving any selected text applicable to the provisional response into a specified area of the provisional response document, [0085] “recognize and replace strings in a textual prompt template with corresponding text from the discrete requirement and text from the re-ranked relevant content,”
rating each piece of selected text inserted into the provisional response document according to a rating scheme, and [0084] (ranking and reranking relevant content against requirements), [0085] (text in document is designed using higher ranking semantic language model generated response text),
filling any remaining icons and incorporating these into an updated coherent draft. [0115] (fill remaining sections), [0117] (determine if the sections filling is complete, if yes then proceed to [0118]), [0118] “generating the response document based on the selected candidate response portions corresponding to each discrete requirement, wherein the response document is automatically generated to satisfy the requirement specification.”
Regarding Claims 8 and 11. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, wherein the at least one icon is in the [ (claim 8) configuration/ (claim 11) form ] of a puzzle piece. [0015] “The system may generate a generative stitching interface for displaying, to a user, the different selectable candidate response portions,” [0075] “may present … via a generative writing interface ... The generative writing interface may therefore display unique and discrete writing tasks to the user in the form of a task list,” (Examiner note: identifying the interactive icon as a puzzle piece configuration or form represents non-functional descriptive information that is not patentably recognized as distinct).
Regarding Claim 9. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, further comprising the step of: sending a user to at least one successive search result page. [Figure 6C] (interface where user clicks requirement and is transferred to the interface showing search results at Fig. 6D), [Figure 6D] (display panel with results), [0080] “The search service returns relevant output that includes a set of ranked document matches, scored based on how semantically related they are to the natural language transformer understanding of the initial input query.”
Regarding Claim 12. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, wherein the rating scheme is a color-coded scheme, and wherein the color-coded rating scheme is comprised of green signaling a good fit of the text within the document, yellow signaling a state of caution regarding the fit, and red signaling a poor fit. [0084] (ranking and reranking relevant content against requirements), [0085] (text in document is designed using higher ranking semantic language model generated response text) (Examiner note: the color-coding scheme and individual colors is non-functional descriptive information that is not a patentable distinction).
Regarding Claim 13. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, wherein each icon is activated by utilizing at least one LLM, at least one NLP technique, or both. [0086] (LLM), and [0005] (Natural Language Understanding).
Regarding Claim 14. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, comprising the step of:
conducting iterative learning and refinement to continually improve the system's ability to understand and generate improved text. [0015], [0048], [0069], [0080], and [0091] (numerous disclosures of continuous improvement at different portions of the prior art).
Regarding Claim 15. Aberle discloses: A method of providing and using an Al-based legal work product drafting system according to claim 7, comprising the further steps of:
completing a draft, [0118] “generating the response document based on the selected candidate response portions corresponding to each discrete requirement, wherein the response document is automatically generated to satisfy the requirement specification.”
and either:
downloading, saving, copying, or sharing the completed draft, [0095] (save), [0058] (share),
or any combination of these.
Regarding Claim 16. Aberle discloses: A method of providing and using an Al-based legal work product drafting system,
comprising the steps of:
providing system software, [0035] (software programs),
providing at least one computerized device for running the system software, [0034] (computer system),
providing a user interface portion, [0052] (user interface),
providin