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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/07/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 12 is objected to because of the following informalities:
Claim 12, recites “an output that controls how the language model with paraphrase the at least a portion of the source document”
The above limitation is not a proper English sentence. It appears that applicant intended to express “an output that controls how to paraphrase the at least a portion of the source document with the language model”
Appropriate correction is required.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-11 and 14-20 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1-11 and 14-20 are directed to a computer program product embodied on a non-transitory computer readable medium. The claims 1-11 and 14-20 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1-11 and 14-20 fall into one of the four statutory categories the patent eligible subject matter, independent claim 1 recites a number of steps of (“generating …”, “providing …”, “storing…”, “obtaining …”, “searching …” and “outputting …”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (Spec. [0019]; Fig. 2), the disclosed invention is related to providing a unique variant of an original document by replacing a portion of text in the original document with a paraphrased text. Each person gets a variant of the original document with different paraphrased texts. If a target document is leaked to the public, the system can determine who leaks the target document by comparing unique paraphrased text of the leaked document with unique paraphrased text in the records.
Although the disclosure describes generating unique paraphrased text using a large language model (LLM), the claimed invention defined by independent claims can be regarded as a person creates different unique variants of the original document by replacing a portion of text with different paraphrased text. Claim 1 can be reasonable interpreted as:
generating a plurality of unique document variants of a source document, wherein each unique document variant is generated by causing a language model to paraphrase at least a portion of the source document (A person edits a source document by replacing a section of the source document with different paraphrased texts to obtain many unique copies; Note, a claimed “a language model” ca be interpreted as language knowledge of the person);
providing, for each of a plurality of users that are authorized to access the source document, a different one of the unique document variants to the user rather than the source document (The person distributes individual copy with unique paraphrased text to each of employees in a company);
storing a plurality of records, wherein each record includes a unique identifier for a particular one of the users and one or more uniquely paraphrased portions of the unique document variant provided to the particular user (The person also keeps records related to different unique copies and what variant copy of each employee gets);
obtaining a target document that has been used in an unauthorized manner (The person noticed a copy of the source document get unauthorized accessed, e.g., circulating on the Internet);
searching the plurality of records to identify one of the records in which at least one of the one or more uniquely paraphrased portions of the unique document variant is found within the target document (The person searches the record and determined that the unique copy leaked to the public was original give to John); and
outputting identifying information for the user associated with the unique identifier included in the identified record (The person writes a notice that John leaks the document because the leaked document matches the unique paraphrase in a copy sent to John).
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011). If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
As explained above, the limitations recited in claim 1 could be performed in human mind or with a pen / a piece of paper. If claim 1 were patented, a person would infringe the patent if the person is performing his routine / daily work. The dependent claims further recite steps for data manipulation related to the abstract idea. These claim elements, when considered alone and in combination, are considered to be abstract ideas because they are directed to a mental process. For example,
Claim 2: searching records for unique copy that is a mental process / human activity;
Claim 3: changing / setting user’s access permission (a mental process / human activity);
Claim 4: storing documents and giving a copy to a user (a mental process / human activity).
Claim 5: generating a unique copy with receiving further input from a user (a mental process / human activity);
Claim 6: receiving a request from a user to access a document and giving a unique copy of the document to the user (a mental process / human activity);
Claim 7: providing a requested document as downloading (a mental process / human activity);
Claim 8: providing a requested document by sending a variant of source documents using email (a mental process / human activity);
Claim 9: keeping a complete copy of the document (a mental process / human activity);
Claim 10: keeping a variant copy of the source document (a mental process / human activity);
Claim 11: the generated paraphrase text is different text in an original source text (a definition of paraphrasing);
Claim 14: calculating / comparing hash values (mathematic operations);
Claim 15: paraphrasing a selected portion contributed by another user (a mental process / human activity);
Claim 16: generating a digital signature (mathematic operations);
Claims 17 and 18: determining how much text will be paraphrased (a mental process / human activity);
Claim 19: determining how many words will be replaced using synonym / paraphrased text (a mental process / human activity);
Claim 20: comparing similarity between documents (a mental process / human activity);
In these situations, claims 1-11 and 12-20 are considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Eligibility Step 2A, Prong two (integrated into a practical application? MPEP 2106.04(d)).
Since the claimed invention falls into a judicial exception according above analysis (YES branch of PRONG ONE in the step 2A), a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
Eligibility Step 2B (Inventive concept / significantly more consideration; MPEP 2106.05).
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter and are rejected under 35 U.S.C. 101 (MPEP §2106, flowchart, Step 2B, NO branch).
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.
Claim 11 is 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 pre-AIA the applicant regards as the invention.
Claim 11 recites “the difference between …” which has an insufficient antecedent basis. Antecedent limitations never define a difference.
Allowable Subject Matter
Claims 12-13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Dependent claims 12-13 are directed to a patent eligible subject matter (not rejected under 35 U.S.C. 101). Dependent claims 12-13 recite limitations that reflect an improvement to control how unique paraphrases are generated by a large language model (Spec. [0024-0026]). In addition, when considering all limitations as a whole, prior art of record, either alone or in combination, does not teach or suggest limitations recited in claim 12. Therefore, prior art of record fails to anticipate or render obvious the claimed invention.
There is no rejection to claims 1-11 and 14-20 over prior art references. These claims maybe allowable if overcome the rejection under 35 U.S.C. §101 set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 1 recite limitations related to (1) generating a plurality of unique document variants by replacing a portion of text in the source document with different paraphrased text generated by a language model; (2) providing to each user a variant document with unique paraphrased text; (3) keeping records for the unique document variant sent to each user; (4) if a target document get unauthorized accessed, searching records to identify who leaks the target document by comparing unique paraphrased text in the leaked document with the records.
Kersting et al. (US PG Pub. 2020/0004828) discloses generating different variants of a document by replacing some words with synonyms or replacing a portion of text with text that have a similar meaning (i.e., paraphrasing). The different variants of documents are used to express ideas in different ways. Kersting does not discloses using different variants to detect unauthorized access by comparing unique paraphrases from a target document with different paraphrases in records. Kersting could not meet limitations related to comparing unique paraphrases to identify a user.
Matthews et al. (US Pat. 9,535,892) discloses generating different unique contents from a raw document by modifying certain words with synonyms or rearrange contents. The different unique contents are provided to different business so that their contents are different. Matthews does not disclose identifying a user based on unique paraphrases in a document variant.
Qian et al. (Exploring Diverse Expressions for Paraphrase Generation, published 2019) discloses generating variety of paraphrases by inputting text into a language model. Qian does not discloses comparing different paraphrases with records to determine a person who received a particular paraphrased text.
Zhang et al. (“You Can Access but You Cannot Leak: Defending Against Illegal Content Redistribution in Encrypted Cloud Media Center”, published 2018) discloses who leaks a document by using access control and encryption. Zhang does not disclose generating unique paraphrases and identifying a user based on unique paraphrases.
Rinck (“Document DNA: Distributed Content-Centered Provenance Data Tracking”, 2015) discloses generating document DNA that contain various unique information. Rinck disclose tracking document distributions based on document DNAs. Rinck does not discloses identifying a person based on a unique paraphrase in a document.
Although individual features could be found from one or more prior art references, when considering all limitations as a whole, prior art of record, either alone or in combination, does not teach or suggest all features defined by claim 1. Therefore, prior art of record fails to anticipate or render obvious the claimed invention. Dependent claims 2-20 further limit claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIALONG HE/Primary Examiner, Art Unit 2659
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