Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This office action is in response to the terminal disclaimer filed on September 29, 2025, in which claims 1-17 were canceled and claims 18-28 are presented for further examination.
Response to Arguments
Applicant’s arguments filed on September 29, 2025, with respect to claims 18-28 have been fully considered and are persuasive. The double patenting rejection has been withdrawn in light terminal disclaimer filed on September 29, 2025.
Double Patenting
After further reviewed Applicant’s arguments in light of the specification, it is conceivable that the double patenting rejection has been withdrawn.
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 18-28 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 18 recites “technologically unrelated”. It is unclear as what the applicant is referred to “technologically unrelated”. Such technologically unrelated is not defined by the claims.
Claim 18 recites “any randomly selected”. It is unclear as what the applicant referred to any randomly selected. Such any randomly selected limitation is not defined by the claim.
Claim 24 recites “includes all possible combination”. It is unclear as what the applicant refers to all possible combination and what would be all the possible combination.
Claim 26 recites “the functional purpose of a plurality of patents”. It is unclear as what the applicant meant by “function purpose”. Such functional purpose is not described by the claim.
Claim 27 recites “the body of fundamental scientific”. It is not clear as what the Applicant meant by “body of fundamental scientific”. Such body of fundamental scientific is not defined by the claim.
Claim 28 recites “the body of knowledge” and “a specific generic function”. It is not clear as what the Applicant meant by “body of knowledge and generic function”. Such body of fundamental sci body of knowledge is not defined by the claim.
Claims 19-28 are rejected for incorporating the deficiency of their respective base claims.
Applicant is advised to amend the claims to resolve the deficiency set forth above.
Claim 18 recites the limitation “the selected first patent class”, “the selected second patent class”, “the total number”, “the threshold”, “the number of said identified patent”; claim 19 recites “the largest overlap”, claim 21 recites “the average patent”, claim 23 recites “the first patent class type”, :the second patent class type”. There is insufficient antecedent basis for this limitation in the claim.
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 18-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract without significantly more.
With respect to subject matter eligibility under 35 USC 101, it is determined whether the claims are directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter.
The limitation “creating a technology model that reflects a plurality of technology domains” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. One can mentally evaluate or judge that a specific lists of inventions to track technological change. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper create accurate and complete lists of inventions in order to track technological change.
The limitation “querying a database of patents to identify patents lying in both the selected first patent class and the selected second patent class” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. One can mentally evaluate or judge that a specific lists of inventions to identify patents lying in both the selected first patent class and the selected second patent. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper identify patents lying in both the selected first patent class and the selected second patent.
The limitation “determining a threshold overlap standard based on an expected number of patents lying in both the selected first patent class and the selected second patent class by calculating a joint probability of any single patent appearing in both the selected first patent class and the selected second patent class if the pair was selected at random and was technologically unrelated and multiplying said probability by the total number of patents in the patent system to obtain an expected number of patents in any randomly selected unrelated class pair” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. One can mentally evaluate or judge that a specific lists of inventions to determine a threshold overlap standard. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper determine a threshold overlap standard based on an accurate and complete lists of inventions.
The limitation “comparing the number of said identified patents in the class pair with the threshold overlap standard, and if the number of said identified patents in the class pair is below the threshold overlap standard, determining that the class pair is unlikely to encompass a meaningful technology domain and discarding the class pair” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. One can mentally evaluate or judge that a specific lists of inventions to compare a number of said identified patents. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper compare a number of said identified patents based on an accurate and complete lists of inventions.
The limitation “if the number of said identified patents in the class pair is equal to or below the threshold overlap standard, determining that the class pair is likely to encompass a meaningful technology domain and retaining the class pair” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement. One can mentally evaluate or judge that a specific lists of inventions to determine a class pair that is likely to encompass a meaningful technology domain. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper determine a class pair that is likely to encompass a meaningful technology domain based on an accurate and complete lists of inventions.
The limitation “updating the technology model, by calculating, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains;” in claim 18, as drafted, is a process that, under its broadest reasonable interpretation, covers a mental process as a form of evaluation or judgement and/or a math calculation. One can mentally evaluate or judge that a specific lists of inventions to update the technology model based on a calculation of each class pair. That is, in the context of the claim encompasses one can mentally or manually with the aid of pen and paper update the technology model based on a calculation of each class pair.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes but for the recitation of generic computer components, then it falls within the "Mental Processes" grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgement, and opinion). Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements “selecting a first plurality of patent classes from a first patent class type and a second plurality of patent classes from a second patent class type to form a plurality of class pairs, each of which reflects a potential technology domain”, “storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains”; and “applying the prediction model to obtain an estimated improvement rate based on said calculated average centrality value for each of the class pairs”.
The limitation “ and “applying the prediction model to obtain an estimated improvement rate based on said calculated average centrality value for each of the class pairs”, amount to data-gathering steps which is considered to be insignificant extra-solution activity, (See MPEP 2106.05(g)).
The limitation “storing, for each class pair, an average patent centrality value for the said identified patents within each class pair by analyzing a graph representation of said identified patents with a normalized search path node pair index and training a prediction model for the rate of improvement of technology domains”, represents an extra-solution activity because it is a mere nominal or tangential addition to the claim, a mere generic transmission and presentation of collected and analyzed data. (See MPEP 2106.05 (g)).
The conclusions for the mere implementation using a computer are carried over and does not provide significantly more.
With respect to the "selecting" identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);" and thus remains insignificant extra-solution activity that does not provide significantly more.
With respect to the "storing" identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional in displaying information as evidenced by the court cases in MPEP 2106.05(d)(II), " iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93" and "i. … transmitting data over a network, …Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); … OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network)"
With respect to the "applying" identified as insignificant extra-solution activity above when re-evaluated this element is well-understood, routine, and conventional in displaying information as evidenced by the court cases in MPEP 2106.05(d)(II). The claim is not merely to the idea of a solution or outcome and amounts to more than merely “applying” the judicial exception or generally linking the judicial exception to a field of use or technological environment. In other words, the claim reflects an improvement in a computer or other technology.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.
The claims as a whole, do not amount to significantly more than the abstract idea itself.
Accordingly, claim 1 is directed to an abstract idea. The remaining independent claim 15 and 20 fall short the 35 USC 101 requirement under the same rationale.
The dependent claims 20-28 when analyzed and each taken as a whole are held to be patent ineligible under 35 USC 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
Claim 19 recites “wherein the step of querying a database of patents to identify identifying patents having both the selected first patent class and the selected second patent class further comprises assigning patents common to multiple class pairs to the class pair comprising the largest overlap”. This additional element is recited at a high level of generality and would function in its ordinary capacity for assigning patents common to multiple class pairs to the class pair comprising the largest overlap, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more. The same rationale applies claim 15.
Claim 20 recites “wherein the step of querying a database of patents to identify identifying patents having both the selected first patent class and the selected second patent class further comprises assigning patents common to multiple class pairs to each of said multiple class pairs”. This additional element is recited at a high level of generality and would function in its ordinary capacity for having a dependency for assigning patents common to multiple class pairs to each of said multiple class pairs, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more. The same rationale applies claim 16.
Claim 21 recites “wherein the average patent centrality value is computed as of a date occurring after each patent was granted”. There is no additional elements recited so the claim does not provide a practical application and is not considered to be significantly.
Claim 22 recites “wherein the average patent centrality value is computed as of three years after each patent was granted”. There is no additional elements recited so the claim does not provide a practical application and is not considered to be significantly.
Claim 23 recites “wherein the first patent class type reflects the United States Patent Classification; and the second patent class type reflects the International Patent Classification”. There is no additional elements recited so the claim does not provide a practical application and is not considered to be significantly.
Claim 24 recites “wherein the technology model includes all possible combinations of each United States Patent Classification class with each International Patent Classification class”. There is no additional elements recited so the claim does not provide a practical application and is not considered to be significantly.
Claim 25 recites “wherein the first patent class type reflects subclasses within United States Patent Classification; and the second patent class type reflects one or more of subclasses, groups, and subgroups within the International Patent Classification”. There is no additional elements recited so the claim does not provide a practical application and is not considered to be significantly.
Claim 26 recites “wherein each patent class in the plurality of classes comprising the first patent class type represents a classification based on the functional purpose of a plurality of patents”. This additional element is recited at a high level of generality and would function in its ordinary capacity for representing a classification, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more.
. Claim 27 recites “wherein each patent class in the plurality of classes comprising the second patent class type represents a classification based on the body of fundamental scientific knowledge addressed by a plurality of patents”. This additional element is recited at a high level of generality and would function in its ordinary capacity for representing a classification, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more.
Claim 28 recites “wherein each technology domain comprises a set of artifacts that fulfills a specific generic function utilizing a particular and recognizable body of knowledge”. This additional element is recited at a high level of generality and would function in its ordinary capacity for fulfilling a specific generic function, this additional element does not integrate the integrate the judicial exception into a practical application and does not amount to significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
20140075004 (involved in organizing a commonplace of information for intellectual property classification management service applications in an information technology field).
US 20160275414 (involved in calculating one of a first similarity metric or a second similarity metric, where the first similarity metric is associated with a new training sample and existing training samples of a same class as the new training sample, and the second similarity metric is associated with the new training sample and existing training samples of a different class than the new training sample. The new training sample is selectively stored in a memory based on one of the first similarity metric or the second similarity metric).
US 2009/0043797 (involved in organizing a plurality of documents within a dataset of documents, wherein a plurality of documents within a class of the dataset each includes one or more citations to one or more other documents, comprising creating a set of fingerprints for each respective document in the class, wherein each fingerprint comprises one or more citations contained in the respective document, creating a plurality of clusters for the dataset based on the sets of fingerprints for the documents in the class, assigning each respective document in the dataset to one or more of the clusters, creating a descriptive label for each respective cluster, and presenting one or more of the labeled clusters to a user of the computerized system or providing the user with access to documents in at least one cluster.)
US 9,454,731 (involved in analyzing, for example, patent claim charts, with respect to analyzed intellectual property and a target product or other intellectual property).
US 7885987 (involved in analyzing intellectual property documents by assigning attributes to the documents).
US 20050010580 (involved in storing objects and definitions of relationships between the objects, and to process the objects in accordance with the defined relationships, the system being configured so as to support definitions of relationships of two types; a first type of relationship whereby objects can be related such that one object in a hierarchy related to another object by a relationship of the first type is deemed to belong to a set defined by the other object; and a second type of relationship distinct from the first type of relationship and whereby objects can be hierarchically related such that a child object related to a parent object by a relationship of the second type is deemed to inherit characteristics of the parent object and, to an extent specified in the relationship of the second type, a proportion of a characteristic of a further object related to the said parent object by a relationship of the first type).
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/JEAN M CORRIELUS/Primary Examiner, Art Unit 2162 October 18, 2025