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 10/23/25, Applicant amended claims 1-7 and 9-11, canceled claims 8 and 12, and added no new claims. Claims 1-7 and 9-11 are presented for examination.
Objections
Claim 1 is objected to because of the following informalities:
the preamble recites “a memory storing instructions” and then third limitation recites “a memory of the document search device,” which as unclear antecedent basis; and
the third limitation recites “the document search device” which lacks antecedent basis.
Claim 2 is objected to because of the following informality: the fourth limitation recites “wherein the first phrase corresponds” but the third limitation recites “each of the first card objects including at least one of a first phrase or a first similar phrase” so, if the first card objects do not include a first phrase then “the first phrase” recited in the fourth limitation lacks antecedent basis.
Claim 3 is objected to because of the following informality: the second limitation recites “wherein the second phrase corresponds” but the first limitation recites “each of the second card objects including at least one of a second phrase or a second similar phrase” so, if the second card objects do not include a first phrase then “the second phrase” recited in the second limitation lacks antecedent basis.
Claim 9 is objected to because of the following informality: this claim depends on claim 1 and recites “wherein the card objects extracted from the ranked similar documents are arranged and displayed by the processor in descending order of their similarity scores with respect to the at least one phrase” but claim 1 recites “each of the first card objects including at least one of a first phrase or a first similar phrase” so, if the first card objects do not include a first phrase then “the first phrase” recited in claim 9 lacks antecedent basis.
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 and 9-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to mental processes without significantly more. Independent claim 1 recites dividing, by the processor, the target invention into a plurality of phrases each representing a technical feature of the target invention; generating, by the processor, a document embedding vector representing an overall meaning of the target invention and sentence embedding vectors representing meanings of the plurality of phrase, using pre-trained embedding models stored in a memory of the document search device; calculating, by the processor, similarity scores between the target invention and a plurality of documents stored in a database, each similarity score being determined using the document embedding vector and the sentence embedding vectors; determining, by comparing the calculated similarity scores, at least one similar document having a similarity score above a first predetermined threshold, and ranking the at least one similar document in descending order of its respective similarity score; and extracting and listing, by the processor, card objects from the ranked similar documents, each card object including at least one phrase or similar phrase whose semantic similarity to the at least one input phrase exceeds a second predetermined threshold. Dividing a target invention int phrases is dividing a document int phrases and is a mental process accomplishable in the human mind or on paper. Generating a document embedding vector and sentence embedding vectors, calculating similarity scores, determining a similar document, and ranking documents are each recited broadly and are mental process accomplishable in the human mind or on paper. Extracting and listing card objects from documents are also recited broadly and are mental process accomplishable in the human mind or on paper. This claim recites an additional element of receiving, from a user, at least one input phrase related to a target invention, an input step and 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 algorithms or filtering functions or 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 is recited broadly and amounts to 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 ranked similar documents is selected by the user, which is recited broadly 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 including at least one of a first phrase or a first similar phrase whose semantic similarity to the first phrase exceeds the second predetermined threshold, wherein the first phrase corresponds to a first element among the at least one input phrase, and extracting and listing card objects are also recited broadly and are mental process accomplishable in the human mind or on paper. Claim 3 recites extracting and listing, by the processor, second card objects from the selected similar document, each of the second card objects including at least one of a second phrase or a second similar phrase whose semantic similarity to the second phrase exceeds the second predetermined threshold, wherein the second phrase corresponds to a second element among the at least one input phrase, and extracting and listing card objects are also recited broadly and are mental process accomplishable in the human mind or on paper.
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's 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 a third area generating step of, if one of the ranked similar documents is selected by the user, listing card objects corresponding to the selected documents 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 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 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 card objects extracted from the ranked similar documents are arranged and displayed by the processor in descending order of their similarity scores with respect to the at least one phrase, 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 10 recites generating, by the processor, a claim chart screen that displays at least one labeling card object, the labeling card object being a card object selected by a user among the displayed 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 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 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.
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:
Patterson (US 20150248415) teaches techniques for indexing, searching, and describing documents using phrases from said documents, does not teach using pre-trained AI models, document similarity scores above a threshold, comparing similarity scores between documents and an invention, extracting and listing card objects from ranked similar documents (paragraphs 0008-0009, 0013, 0016, 0082, 0121); and
Whalen et al, "Patent Similarity Data and Innovation Metrics," teaches creating a Patent Similarity Dataset from USPTO data dumps and determining similarity between terms and phrases from a patent using document and term vectors from the dataset, does not teach determining similarity to another patent document above a threshold, ranking similar patent documents, or extracting and listing card objects from the ranked similar documents (II The Dataset, III Patent Similarity and Measures pages 5-14).
Responses to Applicant’s Remarks
Regarding objections to claim 2 and 3 each for antecedent basis of “the meaning similar to the first phrase from the selected documents,” and “the selected documents,” in view of this language being removed these objections are withdrawn. Regarding objections to claim 12 for antecedent basis of “the meaning similar to the first phrase from a plurality of similar documents,” in view of this claim being canceled this objection is withdrawn. Regarding rejection of claim 5 under 35 U.S.C. 112(b) for the indefinite language “depending on a user’s operation,” in view of this language being removed this rejection is withdrawn. Regarding rejections of claims 8-9 under 35 U.S.C. 112(b) for the indefinite term “high similarity,” in view of this language being removed this rejection is withdrawn. Regarding rejections of claims 10-11 under 35 U.S.C. 112(b) for the indefinite term “labeling card,” in view of this language being removed this rejection is withdrawn. Regarding rejections of claims 1-4 and 7-9 under 35 U.S.C. 10 by Elias, Applicant’s amendments overcome Elias’ teachings, in particular the removal of each limitation in claim 1 and further reciting of generating embedding document vectors and sentence embedding vectors.
Regarding rejections of claims 1-12 under 35 U.S.C. 101 for reciting mental processes without significantly more, Applicant’s amendments and arguments have been considered but are not persuasive. On page 2 part I of Applicant’s Remarks Applicant asserts the claims do not recite abstract ideas but recite “a specific computer-implemented process that improves the functioning of document search systems for patent analysis.” Examiner disagrees as the claims recite mental processes as shown in the rejections above. The recited process is computer-implemented but it not specific, and steps like dividing the target invention into phrases, generating document or sentence vectors, calculating similarity scores, determining a similar document, and extracting and listing card objects from the ranked similar documents are each recited broadly and lack inventive details. In pages 2-3 part II, Applicant asserts the claims are integrated into a practical application. Examiner disagrees and notes paragraph 0004 states “It is necessary to reinforce the function of evaluating and classifying the relevance of prior documents so that the user can easily find related documents directly. In addition, improvement in an interface that provides search results more intuitively and clearly is also required.” The claim steps do not recite specific steps taken by the invention to improve a technology or address the challenges of a user finding related documents directly or improvements to an interface, thus the claims are not directed to a practical application. The claims recite no steps that improve the function of a search system, the claims are not tied to a particular machine but rather are implemented on a generically-recited computer using a generically-recited processor and memory, and performs no transformation of data into something other than data.
On page 3 part III, Applicant asserts the claims recite an inventive concept that is not well-understood, routine, or conventional. Examiner disagrees as the claims only recite one additional element (“receiving, from a user, at least one input phrase related to a target invention”), which is broadly recites receiving data and amounts to 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, and does not recite an inventive concept per MPEP 2106.05(d). On pages 3-4 part IV, Applicant mentions several court cases and asserts said cases support the claims’ eligibility and Examiner disagrees as follows: claims recite an improved data structure per Enfish v. Microsoft but claims recite the embedding vectors but not how said vectors are improved or how said vectors improve a system function; claims recite automated semantic rule application as in McRO v. Bandai Namco but phrase-based embeddings are not recited as applied as a rule and are not described as a rule in the specification; claims recite generation of a new data structure as in Finjan v. Blue Coat but the recited embedding vectors not a new representation of data, and embedding vectors do not provide a new or improved computer function as in the security profile in Finjan; and the claims recite an improved user interface with card objects as in Core Wireless v. LG Electronics but claim 1 does not recite a user interface and claims 4-7 and 9-11 each generically recite card objects and no improvements recited to a user interface.
On page 4 in part V Applicant asserts the claims do not preempt any abstract ideas and Examiner notes the claims are still directed to mental processes as shown in the rejections above and the additional element does not amount to an inventive concept or significantly more than the recited mental processes as shown above. On page 4 part VI Applicant asserts “the claims provide a specific technological solution to a known technical limitation” but the claim do not recite specific details from the invention that might provide a specific solution, and Examiner did not find a known technical limitation described in the specification.
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.
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 1/16/26