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 Claims
This Office action is in response to correspondence received May 26, 2026.
Per the restriction, claims 1-18 are elected without traverse, claims 19 and 20 are withdrawn. Claims 1-18 are pending and have been examined.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The following limitations do not have support in the provisional:
sending a query to a prior art system to identify related prior art for the newly identified idea
repeatedly requesting the additional information on one or more communication mediums of a business system in response to continuing determining the additional information is required or a timeout event occur
As there is insufficient support for these limitations in the independent claims, the effective filing date is September 8, 2024.
Election/Restrictions
Claims 19 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 26, 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, 9, and 15 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 limitations "the computer-implemented method" and in the first limitation, “the newly identified idea”. There is insufficient antecedent basis for this limitation in the claim. It is unclear if claim 1 is intended to refer back to another claim and if the newly identified idea is first introduced here or is referring back to a previous element. Therefore the scope is unclear due to the lack of antecedent basis. Claims 2-6 are rejected for being dependent on claim 1.
Claims 3, 9, and 15 recite that the patentability score is based on a count of a number of documents identified in a similarity analysis within a defined distance text of the newly identified idea. It is unclear what distance is referred to in a defined distance text. Is it the defined distance from the text of the newly identified idea? The wording is unclear and therefore the scope is unclear.
Therefore, claims 1-6, 9, and 15 are rejected under 35 USC 112.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim(s) 1, 7, and 13, which are similar in scope, recite(s)
The method comprising: sending a query to identify related prior art for the newly identified idea; determining a patentability score, a business value score, a detectability score, or a combination thereof for the newly identified idea; determining whether additional information for the newly identified idea is required based on the patentability score, the business value score, the detectability score, or the combination thereof; repeatedly requesting the additional information in response to continuing determining the additional information is required or a timeout event occur; and performing one or more actions in response to determining the additional information is not required, wherein the one or more actions includes presenting data based on the patentability score, the business value score, the detectability score, or the combination thereof, generating a disclosure form for the newly identified idea, notifying a portfolio manager, or a combination thereof.
Claims 1, 7, and 13 recite a mental process because the steps are collecting, comparing and presenting the analysis of the results. Information about patents is collected and then compared to make a query or a score. Information is then repeatedly requested which is further information requesting. The action performed is presenting information or generating a form which can be done on paper. A timeout event is taught by a deadline, as timeout event means a moment when a clock runs out, hence, a deadline. The identified abstract idea, above, is a method claim which is a process but as detailed the limitations alone and in combination are a mental process and therefore recite a patent ineligible abstract idea.
Alternatively, the independent claims describe, as shown above, a certain method of organizing human activity – commercial or legal interaction. The process of disclosing information about an invention, a step to getting a patent, is both commercial and legal because patenting something is a commercial process and also a legal process. Therefore, in addition to being a mental process, the steps above describe a certain method of organizing human activity.
Claims 1, 7, and 13 do not integrate the abstract idea into a practical application. The additional elements alone, in combination, and considering the claim as a whole, amount to instructions to apply the abstract idea to generic computing components. System and computer implemented have a scope of apply it as there is nothing else claimed as to how technically this is done. See MPEP 2106.05(f)(2). Communications medium likewise is taught by internet (Ultramercial) or wireless (TLI Communications) and therefore is further apply it. For these reasons the additional elements are not a practical application of the abstract idea.
Claims 1, 7, and 13 do not recite significantly more than the abstract idea. The reasoning is carried over from above and applied here: for the same reasons that there is not a practical application; it is not significantly more.
Claims 2-6, 8-12, and 14-18 further define the abstract ideas of the independent claims and therefore, if their limitations were included in those claims, would be rejected as mental process.
Therefore, claims 1-18 are rejected under 35 USC 101.
Claim Rejections - 35 USC § 102
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(s) 1, 2, 4-8, 10-14, and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boozer et al., US PGPUB 20070203737 A1 (“Boozer”).
Per claims 1, 7, and 13, which are similar in scope, Boozer teaches
Per claim 1 specifically, A computer implemented method in par 36: “Referring now to FIG. 1, the various embodiments of the present invention will be described in a context in which the VTTO application 100 resides on a node on the Internet 10. Those skilled in the art will readily appreciate that elements or modules of the VTTO application 100 could be distributed, that is, residing on or operating utilizing several nodes on one or more networks, and that several VTTO applications can operate in tandem or independently to provide the functions described herein. In any event, the phrase "VTTO application" should be construed as inclusive of multiple, modules, software applications, and other components.”
Per claim 7, specifically: A computing apparatus comprising: a processor; Anda memory storing instructions that, when executed by the processor, configure the apparatus to in pars 40-41: “As mentioned above, and with reference to FIG. 2, the exemplary environment 20 for the VTTO application 100 includes a server 200, although in general, the VTTO can be implemented as a combination of hardware and software. The implementation of FIG. 2 is only an example and is not intended to suggest any limitation as to the scope of use or functionality of the architecture. Neither should this implementation be interpreted as having any dependency or requirement relating to any one or any combination of illustrated components.”
Per claim 13, specifically: A non-transitory computer-readable storage medium, the computer- readable storage medium including instructions that when executed by a computer, cause the computer to in pars 42-43: “The server 200 houses the system memory 202, on which software applications such as an operating system (OS) 204 and the VTTO application 100 are stored, along with data 206 that is accessible by the software applications. The system memory 202 can include computer readable media in the form of volatile memory, such as random access memory (RAM), and/or non-volatile memory, such as read only memory (ROM).”
Then, per claims 1, 7, and 13, Boozer teaches sending a query to a prior art system to identify related prior art for the newly identified idea in par 0147: " At step 1106, the VTTO application 100, with or without prompting from a user, performs a prior art search to identify any relevant references, such as preexisting patents and publications. The prior art search may also include references identified by the inventor in completing the e-IDF. The prior art search access public or subscription based external data sources, such as patent office records, the Internet, and the like, to locate the references." Search teaches query.
Boozer then teaches determining a patentability score, a business value score, a detectability score, or a combination thereof for the newly identified idea in par 147: " At step 1108, the results of this search are factored into a scoring algorithm, which generates a score according to a predefined scale. … The minimum score may vary according to subject matter and intellectual property strategy (e.g., an inventive entity may be more interested in speculating on patentability when the technology is critical or particularly lucrative). "
Boozer then teaches determining whether additional information for the newly identified idea is required based on the patentability score, the business value score, the detectability score, or the combination thereof in par 147: " If the score is too low, at step 1114 the inventor is given at least one opportunity to refine the disclosure, resubmit it with additional or different information, or indicate that he or she concurs with the finding that the invention should not be pursued."
Boozer then teaches repeatedly requesting the additional information on one or more communication mediums of a business system in response to continuing determining the additional information is required or a timeout event occur in par 0148: "Continuing on to FIG. 11a, at step 1116 the VTTO application 100 determines whether the IDF has been approved. If it has not, then the method returns to step 1114." Returning to 1114 teaches repeatedly requesting the additional information. The VTTO application is the communication medium of a business system.
Boozer then teaches and performing one or more actions in response to determining the additional information is not required, wherein the one or more actions includes presenting data based on the patentability score, the business value score, the detectability score, or the combination thereof, generating a disclosure form for the newly identified idea, notifying a system associated with a portfolio manager, or a combination thereof in par 147: "If the score is sufficiently high, then at step 1112, the IDF is automatically routed for review and approval by the designated individuals (e.g., TTO manager, invention review board, and the like), which access the VTTO application 100 to provide their vote or recommendation. " Routing for review teaches presenting data based on the score because the score is calculated based on the IDF.
Per claims 2, 8, and 14, which are similar in scope, Boozer teaches the limitations of claims 1, 7, and 13, above. Boozer further teaches wherein the query comprises text identified in one or more communication mediums in par 0147: "The prior art search may also include references identified by the inventor in completing the e-IDF. The prior art search access public or subscription based external data sources, such as patent office records, the Internet, and the like, to locate the references."
Per claims 4, 10, and 16, which are similar in scope, Boozer teaches the limitations of claims 1, 7, and 13, above. Boozer further teaches wherein the business value score is based on a total of numerical values assigned to one or more considerations comprising market demand, potential revenue generation, competitive advantage, and alignment with company goals or objectives in par 91: “5. Invention record scoring rules management--each invention record submitted via the VTTO application 100 is eventually scored to determine its potential value to the inventive entity. This interface enables the user to create, edit, or delete records, preferably via a wizard, that establishing rules for scoring invention records. These rules may analyze the values of parameters submitted with the invention disclosure form (IDF) to determine the invention's potential, in combination with the number of similar innovations identified in a prior art search, which may also be performed via the VTTO application.”
Per claims 5, 11, and 17, which are similar in scope, Boozer teaches the limitations of claims 1, 7, and 13, above. Boozer further teaches wherein the detectability score is based on one or more factors comprising a nature of the newly identified idea and industry and market factors in par 114: “The number and quality of hits returned on the search is translated into a score associated with the IDF--the more hits, the lower the score. If a significant number of relevant hits are returned and the IDF is not yet finalized, the Inventor is given the option of reopening the disclosure to narrow or redefine the invention. If the IDF has been finalized already, the score is attached to the IDF and sent to the Technology Transfer Office Designee.”
Per claims 6, 12, and 18, which are similar in scope, Boozer teaches the limitations of claims 1, 7, and 13, above. Boozer further teaches comprising: determining additional information is required based on the patentability score not meeting a threshold requirement
and determining additional information is not required based on the patentability score meeting a threshold requirement in par 147: “The minimum score may vary according to subject matter and intellectual property strategy (e.g., an inventive entity may be more interested in speculating on patentability when the technology is critical or particularly lucrative). If the score is sufficiently high, then at step 1112, the IDF is automatically routed for review and approval by the designated individuals (e.g., TTO manager, invention review board, and the like), which access the VTTO application 100 to provide their vote or recommendation. If the score is too low, at step 1114 the inventor is given at least one opportunity to refine the disclosure, resubmit it with additional or different information, or indicate that he or she concurs with the finding that the invention should not be pursued.”
Therefore, claims 1, 2, 4-8, 10-14, and 16-18 are rejected under 35 USC 102.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 3, 9, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boozer et al., US PGPUB 20070203737 A1 (“Boozer”) in view of Grabau et al., US PGPUB 20200073879 A1 (“Grabau”).
Per claims 3, 9, and 15, which are similar in scope, Boozer teaches the limitations of claims 1, 7, and 13, above. Boozer does not teach wherein the patentability score is based on a count of a number of documents identified in a similarity analysis within a defined distance text of the newly identified idea.
Grabau teaches a computer-implemented method for retrieving a similar document from a corpus of documents is provided. See abstract. This includes for patent applications see par 2.
Grabau teaches wherein the patentability score is based on a count of a number of documents identified in a similarity analysis within a defined distance text of the newly identified idea in pars 55-57: “The file information may be uploaded to the knowledge graph data store in the prior art database 206. A semantic encoder may create a vector representation of the components from the document parser using a deep neural network encoder that captures the semantic meaning of the text. A syntactic encoder may create a vector representation of those components from the document parser using a term frequency-inverse document frequency (TF-IDF) encoder that captures the syntactic meaning of the text.
In some embodiments, when near real-time module 230 has completed processing, scoring module 232 may ingest file data and execute several processes. First, scoring module 232 may run a query of the prior art database 206. Query data may be returned in the form of files that are the most semantically similar and the most syntactically similar to the received file. Query data may also return files that are adjacent the received file in the knowledge graph. In some embodiments, similarity may be determined using cosine, Pearson correlation coefficient, or Jaccard index. The number of files returned in the query data may be a parameter. Once the three groups (semantic, syntactic, and graphical) of similar patents are returned to the scoring module 232, an ensemble process may combine the results to generate an optimal answer set of similar files.
The ensemble process may use a voting algorithm to consolidate the lists of files from the semantic, syntactic, and graph processes. For example, if a file appears in one process's output, that occurrence contributes votes equal to the inverse rank of where the file appears in that process' list. The votes may be accumulated for each unique file and the top files are returned as the answer set ranked by the number of votes each file received. In some embodiments, prior art application 204 may receive, from a user interface, a desired number of results. Thus, prior art application 204 may return a list having the input number of results. In some embodiments, one or more of the processes' vote contributions may be weighted. For example, if the semantic vector is determined to be a more accurate predictor of similarity for a particular document type, the semantic process's votes may have a higher weight than the syntactic and graph processes." Cosine teaches text distance. Number of files in the query data as a parameter teaches counted number of documents.
It would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention to modify the patent search and disclosure teaching of Boozer with the text distance searching similarity of Grabau because Grabau teaches in par 2-3 that: “….current computerized search tools require a human to input information at one or more steps. Inefficiencies in current search methods also stem from the difficulty of quantifying textual documents, yielding sub-optimal results.
Thus, there exists a need for systems and methods for efficiently and accurately identifying similar documents.” One would be motivated by Grabau’s taught motivation to combine Grabau with Boozer to achieve the benefit of quantifying textual documents and efficiently and accurately identifying similar documents. For these reasons one would be motivated to modify Boozer with Grabau.
Therefore, claims 3, 9, and 15 are rejected under 35 USC 103.
Prior Art Considered Relevant
The following prior art is considered relevant to Applicant’s disclosure:
Zellner et al., US PGPUB 20180189909 teaches in pars 23 and 43-44, and 58, performing a prior art search in a system; then in par 063 scoring the patent submission, then in par 0103 with the ability to remove or include art, requiring additional information depending on the score.
Jessen et al, US PGPUB 20160350886 A1 teaches in par 44 performing a patent search in a system.
CalTech, Report an Invention, available at: < https://web.archive.org/web/20230626040220/https://innovation.caltech.edu/patents-licensing/report-an-invention > archived on June 26, 2023.
Teaches an electronic submission of an inventor disclosure which is relevant to Applicant specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD W. CRANDALL whose telephone number is (313)446-6562. The examiner can normally be reached M - F, 8:00 AM - 5:00 PM.
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/RICHARD W. CRANDALL/ Primary Examiner, Art Unit 3619
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