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 .
Examiner’s Comments
Claim 1 presented for examination on 09/11/2024. Applicant filed an amendment on 01/20/2026 amending claims 1 and adding new claims 2-6. After careful consideration of applicant’s amendments and arguments, Examiner maintains the ground of rejections of claims as set forth in detail below. Applicant's arguments with respect to claims have been fully considered but they are not found to be persuasive.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. ____ (2014).
In the instant case, claims 1-6 is directed to system and method for examining patent application, generating docket number and determining specification include single or plurality of inventions. The claim 1 is analyzed to see if claims are statutory category of invention, recites judicial exception and the claims are further analyzed to see if the claims are integrated into practical application if the judicial exception is recited and the claims provides an inventive as per 2019 Revised Patent Subject Matter Eligibility Guidance (2019 PEG) and October 2019 Update: Subject Matter Eligibility as set forth below:
Analysis:
Step 1: Statutory Category? This part of the eligibility analysis evaluates whether the claim falls within any statutory category. MPEP 106.03.
Claim 1 is directed to a process i.e., a series of method steps or acts, of generating docket number, which is a statutory categories of invention (Step 1: YES).
Step 2A - Prong 1: Judicial Exception Recited? This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04(II) and the October 2019 Update, a claim “recites” a judicial exception when the judicial exception is “set forth” or “described” in the claim. There are no nature- based product limitations in this claim, and thus the markedly different characteristics analysis is not performed. However, the claim still must be reviewed to determine if it recites any other type of judicial exception.
Claim 1 is then analyzed to determine whether it is directed to a judicial exception. The claim recite plurality of steps of “determining whether a specification of an application includes a detailed discussion for a single invention or for a plurality of inventions, generating a common specification number, a common specification designator, a plurality of invention numbers, a plurality of protection type designators corresponds to the first invention.”
The limitations of “determining whether a specification of an application includes a detailed discussion and generating a common specification number, a common specification designator, a plurality of invention numbers, a plurality of protection type designators”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind similar to Mortgage Grader, Inc., v. First Choice Loan Servcs with computer implemented method and system for anonymous shopping loan packages but for the recitation of generic computer components. That is, other than reciting “by computing entity” nothing in the claim element precludes the step from practically being performed in the mind and thus fall within the “mental processes” grouping of abstract idea set forth in the 2019 PEG. 2019 PEG Section I, 84 Fed. Reg. at 52. For example, but for the “by computing entity” in the context of this claim encompasses the user manually performing steps determining and generating…” The recitation of a computing entity in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes. See October Update at Section I(C)(ii). Thus, the above limitations of recite concepts that fall into the “mental process” grouping of abstract ideas. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (YES).
Step 2A - Prong 2: Integrated into a Practical Application? This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. 2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Besides the abstract idea as described in Prong 1, the claim recites the additional elements of the computing device performing “generating a first docket number for the first invention by combining the common specification number, the common specification designator, the first invention number, and the first protection type designator.”
An evaluation of whether limitations are insignificant extra-solution activity is then performed. Note that because the Step 2A Prong 2 analysis excludes consideration of whether a limitation is well-understood, routine, conventional activity (2019 PEG Section III(A)(2), 84 Fed. Reg. at 55), this evaluation does not take into account whether or not limitation (a) is well-known. See October 2019 Update at Section III.D. When so evaluated, this additional element represents mere data gathering for generate docket number. The processor/computing entity is also an additional element which is configured to carry out other limitations i.e., it is the tool that is used in steps described in Prong 1. But the computing entity/processor is recited so generically without any details that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a controller. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception (Step 2A: NO).
Step 2B: Claim provides an Inventive concept? This part of the eligibility analysis evaluates whether the claim as a whole amounts to significantly more than the recited exception, i.e., whether any additional element, or combination of additional elements, adds an inventive concept to the claim. MPEP 2106.05.
As explained with respect to Step 2A Prong 2, there are two additional elements.
The first is the computing entity/device, which is configured to perform all the limitations recited. As explained previously, the computing device/entity is at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The second additional element is limitation of “generating a first docket number for the first invention by combining the common specification number, the common specification designator, the first invention number, and the first protection type designator”, which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant. Under the 2019 PEG, however, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B. 2019 PEG Section III(B), 84 Fed. Reg. at 56. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well-known. See MPEP 2106.05(g). Here, the recitation of a computing device/entity being configured to “data gathering/combining of common specification number, the common specification designator, the first invention number, and the first protection type designator and generating docket number” that is recited at a high level of generality, and, as disclosed in the specification, is also well-known. This limitation therefore remains insignificant extra-solution activity even upon reconsideration. Thus, limitation (a) does not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept (Step 2B: NO). The claim is not eligible.
Therefore, the additional element only recite generic components and steps are well-understood routine and conventional. The automating conventional activities of (“generating… and produce…..”) using generic technology does not amount to an inventive concept (See Alice, 134 S. Ct. at 2358) as these simply describes "automation of a mathematical formula/relationship through use of generic-computer computer function (see OIP Technologies, Inc. v. Amazon.com, 788, F.3d at 1363). Claims as recited do not provide any particular asserted inventive technology for performing those functions and therefore the claims are held patent ineligible (see Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims is not patent eligible. (NO).
Dependent Claims:
Examiner further reviewed the dependent claim 2-6 that could be added to the independent claims to make patent eligible. The dependent claims as recited pertains to additional steps similar steps of obtaining and generating using computing entity/device , which appear to be a mental process using a generic computer component that been found to be an abstract idea as described above. These dependent claims do not provide additional elements significantly more than the purported abstract idea 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 dependent claims as recited would not make the independent claim significantly more by incorporating them into the independent claim 1. Therefore, claims 1-6 are not patent eligible (NO).
Reasons for Overcoming Art Rejection
The cited and updated searched prior arts of record Gambhir et al. (Indian Patent Application No. 202211053204A), Lopez et al.(U.S. Pub No. 2011/0213830), Lundeberg et al. (U.S. Pub. No. 2014/0052667), Snyder et al. (WO 02/43306), Lee (U.S. Pub No. 2012/0323804 and Duffy et al. (U.S. Pub No. 2003/0195824) (see Non-Final Rejection issued on 08/21/2025) neither anticipates, nor fairly and reasonably teaches an invention as represented in the current claim set. Applicant requested to obviate the pending rejection under U.S.C 101 for further consideration of the instant application.
Response to Arguments
Examiner maintains the ground of rejections of claims under U.S.C. 101 as set forth in detail below after careful consideration of applicant’s amendments and arguments. Applicant's arguments with respect to claims have been fully considered but they are not found to be persuasive.
With respect to applicant reference to Ex parte Desjardins, the recitation of obtaining any data/information, and generating number by combination obtained data using generic computing entity/device would not improve technology such as performance, reduce storage, and system complexity. The improvement is not reflected in recited claim languages. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
With respect applicant argument on Enfish, the claims as recited is simply a process in which computing entity/device are invoked merely as a tool for implementing abstract ideas of generating data/numbers rather than specific asserted improvement in computer capabilities such as the self-reliant table for computer database in the Enfish or remote filtering tool at a specific location customizable filtering features specific to each end user" in BASCOM or "effect an improvement in technology or technical field" in McRO. The automating conventional activities using generic technology does not amount to an inventive concept (See Alice, 134 S. Ct. at 2358) as these simply describes "automation of a mathematical formula/relationship through use of generic-computer computer function (see OIP Technologies, Inc. v. Amazon.com, 788, F.3d at 1363).
For subject matter eligibility, the examiner’s met by burden clearly articulating the reasons why the claimed invention is not eligible by providing a reasoned rationale with examples from Interim Eligibility Guidelines identifying the judicial exception recited in the claim and why it is considered an exception, and examined the additional elements in the independent and dependent claims and explained why they do not amount to significantly more than the exception. The analysis as described in Steps 2A and 2B of Interim Eligibility Guidance (IEG) above is sufficient as it incorporates “significantly more” consideration in step 2B even if claim includes an abstract idea. The claims as recited has failed the Mayo/Alice step one and step two analysis as described above and the applicant arguments do not change the conclusion that the claim is directed to patent ineligible subject matter.
Conclusion
THIS ACTION IS MADE FINAL. 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.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosures. The following are pertinent to current invention, though not relied upon:
Brockman et al. (U.S Pub No. 2024/0281124) teach interactive patent visualization of multiplicity of similar patent documents.
Grainger (U.S. Pub No. 2002/0161733) teaches creating electronic prosecution experience for patent application.
Lopez et al.. (U. S. Pub No. 2011/0213830) teach cloud-based intellectual property and legal docketing system with data management.
Lundberg et al. (U.S. Pub No. 2014/0052667) teach patent portfolio management including patent docket activity description.
Suzgun et al. (Harvard, 2022) teach a large-scale, well-structured and multi-purpose corpus of patent applications.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BIJENDRA K SHRESTHA whose telephone number is (571)270-1374. The examiner can normally be reached 8:00AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abhishek Vyas can be reached at (571) 270-1836. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Respectfully submitted,
/BIJENDRA K SHRESTHA/ Primary Examiner, Art Unit 3691
June 16, 2026
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