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
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/19/26 has been entered.
In amendments dated 4/19/26, Applicant amended claims 1-3, 5-6, 9-11, canceled no claims, and added claim 13. Claims 1-7, 9-11, and 13 are presented for examination.
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 1-7, 9-11, and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental processes without significantly more. Independent claim 1 recites generating, by the processor, first comparison elements of the target invention from the at least one input phrase, the first comparison elements corresponding respectively to elements of the target invention; generating, by the processor using a document embedding model that applies a hierarchical transformer having a sentence transformer applied to each comparison element and a document transformer applied to outputs of the sentence transformer, a first document embedding of the target invention based on the first comparison elements; for each candidate document stored in a database, extracting second comparison elements from the candidate document and generating, by the processor using the document embedding model, a second document embedding of the candidate document based on the second comparison elements, wherein the second document embedding is generated by the hierarchical transformer; determining, by the processor, a primary similarity between the first document embedding and the second document embedding by calculating a distance between the first document embedding and the second document embedding; generating, by the processor, a similar document list comprising candidate documents having the primary similarity greater than or equal to a threshold document similarity; determining, by the processor using a sentence embedding model, a reference sentence embedding representing the target invention and comparison sentence embeddings corresponding to sentences included in each similar document in the similar document list; determining, by the processor, a secondary similarity for each similar document based on distances between the reference sentence embedding and the comparison sentence embeddings; and extracting, by the processor, from each similar document in the similar document list, card objects each comprising a phrase having phrase similarity greater than or equal to a threshold phrase similarity with respect to at least one of the first comparison elements. Generating comparison elements is recited broadly and is a mental process accomplishable in the human mind or on paper. Generating a first and second document embeddings and determining a reference sentence embedding are recited broadly and are mental process accomplishable in the human mind or on paper, and applying a transformer is not significantly more than a mental process per Recentive Analytics v. Fox Broadcasting Corp. (134 F.4th 1205, 2025 U.S.P.Q.2d 628). Determining a primary similarity and a second similarity and a similar document list and extracting card objects from documents are each recited broadly and are mental process accomplishable in the human mind or on paper. This claim recites additional elements of receiving, from a user, at least one input phrase related to a target invention, which is a data gathering step and insignificant extra-solution activity; listing, in a document area of a search result screen, the similar document list together with the secondary similarity for each similar document; listing, in a phrase area of the search result screen, the card objects divided according to the respective first comparison elements; and displaying, in a matching area of the search result screen, a portion of one of the similar documents comprising one of the phrases of one of the card objects selected by the user, and the listing and displaying steps are output steps and also insignificant extra-solution activity. Examiner notes specification paragraph 0003 describes how a user is burdened by selecting from a vast number of documents and how some provided documents do not match the user’s intent and thus deteriorates the reliability of the search results. Paragraph 0004 states a need for more sophisticated search algorithms and user-friendly filtering functions as well as evaluating and classifying relevance of prior documents and an improved interface that provides search results more intuitively and clearly. The claim recites no such improved interface and it recites no improvements in a technology or a function of a computer per MPEP 2106.04(d) or any unconventional steps in the invention per MPEP 2106.05(a). Thus the recited mental process is not integrated into a practical application. Taking the claim as a whole, the input step and output steps are recited broadly and amount to sending and receiving data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Thus the claim does not include additional elements that are sufficient to amount to significantly more than the recited mental process.
Claim 2 recites identifying, by the processor, that one of the similar documents in the similar document list is selected by the user, and identifying documents involves evaluating and a mental process; and extracting and listing, by the processor, first card objects from the selected similar document, each of the first card objects comprising at least one of a first phrase or a first similar phrase having phrase similarity greater than or equal to the threshold phrase similarity with respect to a first one of the first comparison elements, and extracting card objects from a document is recited broadly and a mental process accomplishable in the human mind or on paper, and listing card objects is recited broadly and amount to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 3 recites extracting and listing, by the processor, second card objects from the selected similar document, each of the second card objects comprising at least one of a second phrase or a second similar phrase having phrase similarity greater than or equal to the threshold phrase similarity with respect to a second one of the first comparison elements, and extracting card objects from a document is recited broadly and a mental process accomplishable in the human mind or on paper, and listing card objects is recited broadly and amount to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II.
Claim 4 recites wherein a first card group including the first card objects and a second card group including the second card objects are displayed by the processor, the first card group and the second card group being arranged in a first direction, and each card object within the respective group being arranged in a second direction perpendicular to the first direction, and displaying data is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 5 recites displaying, by the processor, a first area showing one of the first card objects from the first card group, and a second area showing one of the second card objects from a second card group, and displaying data is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II; and replacing, by the processor, the displayed first card object of the first card group with another card object of the same group depending in response to a user operation, and replacing displayed data is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II.
Claim 6 recites if one of the similar documents in the similar document list is selected by the user, listing card objects corresponding to the selected document in a third area, which is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II, wherein the first area and the second area are arranged in a first direction, and the first area and the third area are arranged in the second direction perpendicular to the first direction, which is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 7 recites displaying, by the processor, listing bibliographic information, drawings, claims and detailed description for the selected similar documents, a scope of extraction of the first card objects from the selected similar documents, and at least two of the first card objects, which is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II.
Claim 9 recites wherein the similar documents listed in the document area are arranged in descending order of the secondary similarity of the respective similar documents, and arranging similar documents in an order is still outputting them which is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II, and the card objects listed in the phrase area are arranged in descending order of phrase similarity with respect to the at least one of the first comparison elements, and listing card objects in an order is still recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 10 recites generating, by the processor, a claim chart screen that displays one or more labeling card objects, each labeling card object being a card object selected by a user among the card objects displayed on the search result screen, and displaying labeling card objects is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 11 recites wherein the claim chart screen lists, in a first direction, the labeling card objects divided by each similar document, and lists other labeling card objects from the same similar document in a second direction perpendicular to the first direction, which is recited broadly and amounts to sending data over a network per specification paragraphs 0036-0037, which is routine and conventional per the list of such activities in MPEP 2106.05(d) part II. Claim 13 recites wherein at least one of the document embedding model and the sentence embedding model is trained using learning data comprising pairs of patent documents and labels indicating similarity therebetween, the labels generated based on similarity determinations extracted from examination, trial, or judgment records issued by a patent agency, and training a model is a conventional activity of a computer and not significantly more than a mental process per Recentive Analytics v. Fox Broadcasting Corp. (134 F.4th 1205, 2025 U.S.P.Q.2d 628).
Relevant Prior Art
During his search for prior art, Examiner found the following reference to be relevant to Applicant's claimed invention. Said reference is listed on the Notice of References form included in this office action:
Vargas et al (US 20240311556) teaches database search from a query having an input document, generating word embeddings for the document, and comparing said word embeddings for the input document to word embeddings for stored documents, does not teach receiving an input phrase from the document, using multiple transformers for word embeddings, determining second comparison elements for a document, comparing distance between word embeddings but not documents for similarity between documents, and listing similar words along with documents (paragraphs 0004, 0032, 0073-0095 figures 3A, 3B).
Responses to Applicant’s Remarks
Regarding objections of claim 1 for antecedent basis of “a memory” and “the document search device,” in view of amendments removing this language, these objections are withdrawn. Regarding objection to claim 2 for antecedent basis of “the first phrase,” in view of amendments removing this language, these objections are withdrawn. Regarding objection to claim 3 for antecedent basis of “the second phrase,” in view of amendments removing this language, these objections are withdrawn. Regarding objection to clam 9 for antecedent basis of “the first phrase,” in view of amendments removing this language, these objections are withdrawn. Regarding rejections of claims 1-7 and 9-11 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 3-5 of Applicant’s Remarks, Applicant discusses Step 2A Prong One and asserts the claims do not recite any abstract ideas. Examiner notes MPEP 2106.04(a)(2)(III) states "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." In part (a), Applicant asserts the claimed generating a first document embedding by a document embedding model that applies transformers (“generating, by the processor using a document embedding model that applies a hierarchical transformer having a sentence transformer applied to each comparison element and a document transformer applied to outputs of the sentence transformer, a first document embedding of the target invention based on the first comparison elements;”) cannot be done in the human mind. With the above guidance from the MPEP in mind, Examiner notes that (1) the generating action is performed on a generic computer (MPEP 2106.04(a)(2)(III)(C)) by a model that applies a hierarchical transformer and a document transformer, and merely applying a transformer is a conventional activity of a computer and not significantly more than a mental process per Recentive Analytics v. Fox Broadcasting Corp. (134 F.4th 1205, 2025 U.S.P.Q.2d 628) as shown in the rejections above; and (2) the generating action is recited broadly without any other details such as outputs being combined or a pooling block, and a BRI of this includes writing the embedding on a piece of paper. Examiner also notes the claims in McRo recited rules and no such rules are recited in the claim limitation. Thus Examiner believes the generating limitation recites a mental process.
In part (b), Applicant asserts the determining of a reference sentence embedding using a sentence embedding model (“determining, by the processor using a sentence embedding model, a reference sentence embedding representing the target invention and comparison sentence embeddings corresponding to sentences included in each similar document in the similar document list;”) cannot be accomplished in the human mind. With reference to the MPEP’s guidance in MPEP 2106.04(a)(2)(III) in mind, Examiner notes specification paragraph 0149 describes the sentence embedding model as being an artificial intelligence module and the claim limitation merely applies said model, and merely applying a transformer is a conventional activity of a computer and not significantly more than a mental process per Recentive Analytics v. Fox Broadcasting Corp. (134 F.4th 1205, 2025 U.S.P.Q.2d 628) as shown in the rejections above. The determining action is also performed on a generic computer and is recited broadly, and a BRI includes writing the embedding on a piece of paper. Thus Examiner believes it recites a mental process. In part (c), Examiner notes the claim steps may be considered as a pipeline but some of the limitations are still recited broadly and without details showing how they are done, such as generating first comparison elements from the input phrase (how?), determining a primary similarity between first and second document embeddings by calculating a distance (how?), generating a similar document list (how?), determining a second similarity for each similar document based on distances between sentence embeddings (how?), and extracting card objects of phrases from a document (how?), as shown in the rejections above.
On pages 5-7 of Applicant’s Remarks, Applicant discusses Step 2A Prong Two and asserts “the claims as a whole integrate every such step into a practical application that improves the functioning of a computer-implemented document retrieval and analysis system.” In part (a) Applicant discusses the claimed document embedding model as a hierarchical transformer that comprises two transformers but the limitations still only apply the transformers, and per the Recentive Analytics case and MPEP 2106.05(f) (“Use of a computer or other machinery in its ordinary capacity for economic or other tasks ... or simply adding a general purpose computer or computer components after the fact to an abstract idea ... does not integrate a judicial exception into a practical application or provide significantly more.”) this is conventional activity of a computer and it not an improvement or significantly more than an abstract idea. In part (b) Applicant asserts the claims recite a the two-stage cascaded architecture but there is no architecture claimed and no discussion of such an architecture in the specification. The claims do recite generating a similar document list of documents having a determined similarity above a threshold and then determining a secondary similarity for each similar document but the claims do not recite details showing how the invention determines these similarities for the embeddings or the documents and thus do not recite an improvement in computer-implemented information retrieval. In part (c) Applicant discusses the output steps as being an improvement but these steps are indeed generic output steps. These limitations lack details beyond listing similar documents and card objects for the documents, although Examiner found support in specification in paragraphs 0055, 0063, and 0066 listing other details that might shown an improvement in such a UI, such as displaying before and after phrases of a selected similar phrase such that the next portion is displayed in the matching area (paragraph 0066). The claims in the Core Wireless case recited specific functionality in the menu ("these claims are directed to a particular manner of summarizing and presenting information in electronic devices."), which Applicant’s claims do not do beyond simply displaying data so Examiner does not see an improvement.
On pages 7-8 Applicant discusses Step 2B and asserts “the ordered combination of limitations in claim 1 supplies an inventive concept that is not well-understood, routine, or conventional.” Examiner disagrees as the additional elements receive at least one input phrase and list similar documents, card objects, and then portions of the similar documents and phrases of one of the card objects. The input step is just that and does not affect the computational steps that follow, and the output steps likewise are not related to the computational steps that preceded them. Examiner showed above how these steps are each routine and conventional and Examiner believes that only add nominally to the invention as a whole, and they do not contribute to an inventive concept, Regarding comparisons to the Patterson and Whalen references, Examiner notes that novelty in a claim is not eligibility per MPEP 2106.05(I) ("As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter."). The Enfish case does not apply because the claims recite no specific improvement to a computer. The Finjan case does not apply because no specifically structure model or new data structures are recited in the claims. The BASCOM case does not apply because there is no non-conventional arrangement of components claimed.
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 6/26/26
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