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 .
Detailed Action
In amendments dated 9/4/25, Applicant amended claims 1 and 8, canceled no claims, and added no new claims. Claims 1-12 are presented for examination.
Objections
The disclosure is objected to because of the following informalities:
paragraph 0035 ends with a sentence fragment “Textual content can include;”
paragraph 0040 ends with a sentence fragment “In such a situation, the system accesses a;” and
paragraph 0057 has a sentence fragment “For situations where the number of codes associated with each document to be compared is greater than a pre-specified threshold (e.g., three, four, five, etc.), a confidence level can be associated with the hierarchical taxonomy similarity score that is based upon how many hierarchical .”
Appropriate correction is required.
Rejections under 35 U.S.C. 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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental processes without significantly more. Independent claims 1 and 8 each recites determining, by the one or more data processors, degrees of similarity among the technical subject matter areas of the technical documents through a hierarchical taxonomy code similarity model and a text clustering model; wherein the hierarchical taxonomy code similarity model determines the degrees of similarity among the technical documents’ hierarchical taxonomy codes based upon the technical documents’ network of parent-child subject matter code relationships within the hierarchical technical subject matter taxonomy, wherein the hierarchical technical subject matter taxonomy includes hundreds of thousands of nodes with multiple parent-child relationships at varying levels of depth; wherein the text clustering model determines the degrees of similarity among the technical documents by generating a first set of clusters that cluster together the technical documents of similar technical subject matter areas; and restructuring, by the one or more data processors, at least a portion of the first set of clusters of the technical documents into a second set of clusters based upon the degrees of similarity from the hierarchical taxonomy code similarity model and the determined degrees of similarity from the text clustering model; declustering the first set of clusters to create a data set where each technical document in a cluster is separately paired with all other technical documents in the cluster and determining a text clustering document-to-document similarity score for the separately paired documents; and determining overall document similarity scores based both upon the determined similarity scores for the declustered first set of clusters and upon the determined degrees of similarity using the hierarchical taxonomy code similarity model. Determining degrees of similarity, restructuring clusters of documents, and declustering a set of clusters are each recited broadly and are mental processes accomplishable in the human mind or on paper. Each claim recites an additional element of receiving, by one or more data processors, the technical documents which are associated with multiple taxonomy codes for describing different technical subject matter areas of the technical documents, wherein the taxonomy codes are associated with a hierarchical technical subject matter taxonomy which establishes a network of parent-child technical subject matter code relationships for describing technical subject matter at different levels of detail, which is an input step and insignificant extra-solution activity. Claim 8 recites one or more processors and a memory storage device, which are generic components of a computer system. Examiner notes specification paragraph 0004 discusses the document clustering process as time-consuming because of unstructured documents, and said process provides poor results with clusters having too many unrelated documents. Paragraph 0005 states it is desirable to organize electronic documents with an improved clustering or grouping approach. Examiner believes the claims describe such an approach at a high level but the claim steps do not recite a particular improvement in any technology or function of a computer per MPEP 2106.04(d) and do not recite any unconventional steps in the invention per MPEP 2106.05(a). Therefore, the recited mental processes are not integrated into a practical application. Taking the claimed invention as a whole, receiving technical documents amounts to receiving data across a network per specification paragraph 0035 and figure 1, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. The one or more processors and memory storage device are still generic components of a computer system. Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the recited mental processes.
Claims 2 and 9 each recites wherein the determined overall document similarity scores, the determined similarity scores for the declustered first set of clusters, and the determined degrees of similarity using the hierarchical taxonomy code similarity model each range from 0-100 to indicate document similarity, and scores in a range of values are mental processes accomplishable in the human mind or on paper. Claims 3 and 10 each recites wherein the second set of clusters are synthesized clusters that are generated based upon the determined overall document similarity scores, and generating synthesized clusters is recited broadly and is a mental process accomplishable in the human mind or on paper.
Claims 4 and 11 each recites wherein the determining the degrees of similarity among the technical subject matter areas of the technical documents includes determining the degrees of similarity through the hierarchical taxonomy code similarity model and the text clustering model and a cosine similarity model and a metadata similarity analysis model, and determining similarity is recited broadly and is a mental process accomplishable in the human mind or on paper; wherein overall document similarity scores are generated based upon document similarity analysis performed by the hierarchical taxonomy code similarity model and the text clustering model and the cosine similarity model and the metadata similarity analysis model, and generating document similarity scores is recited broadly and is a mental process accomplishable in the human mind or on paper. Claims 5 and 12 each recites wherein document similarity analysis models include the hierarchical taxonomy code similarity model and the text clustering model and the cosine similarity model and the metadata similarity analysis model, and including models in analysis software is recited broadly and is a mental process accomplishable in the human mind or on paper; wherein performances of each of the document similarity analysis models are analyzed for reconfiguring process flow of the document similarity analysis models used in the document similarity analysis, and analyzing said models is recited broadly and is a mental process accomplishable in the human mind or on paper.
Obviousness Type Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11, and 14-18 of U.S. Patent No. 11,494,419, and also as being unpatentable over claims 1-12 of U.S. Patent No. 12,079,247, in view of the article “Catalogue of Life: 2016 Annual Checklist.” All the limitations in claims 1 and 8 are double patented on claims 1 and 4 in the ‘419 patent and claim 1 in the ‘247 patent per the chart below. These claims do not teach the amendment “wherein the hierarchical technical subject matter taxonomy includes hundreds of thousands of nodes with multiple parent-child relationships at varying levels of depth.” This article teaches this in describing a hierarchical taxonomy model with entries (nodes) for 1.6 million species (page 1 first paragraph), describes hierarchical parent-child relationships and varying levels of depth (page 3 Functionality section, page 5 showing a sample illustration). It would have been obvious to have combined the claimed subject matter in the ’419 and ‘247 patents with an hierarchical subject matter taxonomy such as the Catalogue of Life taxonomy as it accommodates the details needed for nodes and relationships in a subject matter taxonomy of such a size.
Instant application claim
‘419 patent claim
‘247 patent claim
1
1, 4
1
2
5
2
3
6
3
4
7
4
5
8
5
6
9
6
7
10
7
8
11, 14
8
9
15
9
10
16
10
11
17
11
12
18
12
Relevant Prior Art
During his search for prior art, Examiner found the following references to be relevant to Applicant's claimed invention. Each reference is listed on the Notice of References form included in this office action:
Chen et al (US 20210110432) teaches item placement recommendations for products sold by an entity using a multi-domain taxonomy with a tree structure for product categories, teaches a degree of relevance score for items relative to the selling entity but not based on taxonomy codes, also does not teach taxonomy code similarity model or a text clustering model or determining an overall similarity score (paragraphs 0008-0009, 0053-0060 figure 3); and
Chhichhia et al (US 20150324459) teaches classifying documents for a plurality of entities into a hierarchical taxonomy, teaches assigning taxonomy labels to documents representing different categories/subjects for the documents (paragraphs 0070, 0077), determines degrees of similarity between entities in a database but not between taxonomy labels (0070), does not teach multiple similarity or clustering models, looks at pairs of entities but not pairs of documents (paragraph 0089), does not teach determining overall similarity scores for documents (paragraphs 0006-0007, 0063-0071 figure 4).
Responses to Applicant’s Remarks
Regarding rejections of claims 1-12 under 35 U.S.C. 101 for reciting mental processes without significantly more, Applicant’s arguments have been considered but are not persuasive. On pages 8-9 of his Remarks Applicant asserts the technical complexity of performing the method of claim 1 does not allow a mental process to perform such a method. Applicant excerpts paragraphs 0055 and 00654 which describe steps of the method as having complexities. Examiner disagrees and notes inventive details having such complexities are not recited in the claims. Furthermore, per MPEP 2106.04(a)(2)(III), "the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation,” and "nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer." The claim steps identified as mental processes in the rejections above are recited broadly and recited as implemented on a generic computer. Examples of inventive details in the specification, such as descriptions of determining degrees of similarity in the hierarchical taxonomy code similarity mode in figure 2 component 202 and paragraphs 0063-0064; description of the text clustering model determining degrees of similarity in paragraphs 0070-0074 figure 11; and declustering a set of clusters and obtaining pairs of documents in the cluster for determining a similarity score in paragraphs 0046 and 0056.
Regarding rejections of claims 1-12 for nonstatutory double patenting over claims 1, 4-11, and 14-18 of U.S. Patent No. 11,494,419, and claims 1-12 of U.S. Patent No. 12,079,247, Examiner conducted a search of the prior art and fond the article “Catalogue of Life: 2016 Annual Checklist,” which Examiner believes teaches the amended subject matter as a secondary reference in the rejections maintained above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE M MOSER whose telephone number is (571)270-1718. The examiner can normally be reached M-F 9a-5p.
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/BRUCE M MOSER/Primary Examiner, Art Unit 2154 12/4/25