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 .
Claim Status
The claims filed on 3/2/2026 are examined herein.
Claims 1-12 are pending.
Claims 1, 5, and 9 are independent.
Claims 1, 3, 5, 7, 9, and 11 are currently amended.
Claims 2, 4, 6, 8, 10, and 12 are original.
Response to Arguments
Applicant's arguments filed 3/2/2026 have been considered but they are not fully persuasive.
Claim Objections
The prior objections to claims 1, 3, 5, 8, 9, and 11 are withdrawn in view of the current amendments.
35 U.S.C. 112(d)
The prior rejection of claim 11 under 35 U.S.C. 112(d) is withdrawn in view of the current amendments.
35 U.S.C. 101
Regarding the rejection of claims 1-12 under 35 U.S.C. 101 as being directed to an abstract idea without significantly more, Applicant’s arguments have been considered but are not persuasive.
Applicant argues that the claimed invention involves AI-drive extraction and summarization and that it addresses the unique difficulty of parsing complex documents, which is a problem rooted in computer-aided legal and technical analysis. Applicant further argues that the claimed invention provides a technical improvement in data processing, specific search mechanisms, and a computer process that satisfies the user intent (see Remarks, pp. 9-10).
The argument is not persuasive.
With regards to Step 2A Prong 1 of the subject matter eligibility framework, the claims recite the abstract idea subgrouping of “Mental Processes”. The claims have been amended to include features drawn to the use of an AI model. However, the additional element does not preclude the claim from reciting a mental process because the claim merely invokes the model at a high level to perform the mental process including extracting objectives/solutions and comparing documents.
With regards to Step 2A Prong 2 and Step 2B of the framework, the additional element of the AI model is recited at a high level of generality such that it does not convey a technical improvement to one of ordinary skill in the art. There is no improvement to AI model technology itself. The AI model is merely used as a generic implementation tool for the abstract idea. This does not provide integration into a practical application under Step 2A Prong 2, nor does it provide an inventive concept under Step 2B.
For the above reasons, the rejection of claims 1-12 under 35 U.S.C. 101 are maintained herein.
35 U.S.C. 103
Applicant’s arguments regarding the prior rejection of claims 1-12 under 35 U.S.C. 103 have been considered but are moot in view of the new grounds of rejection necessitated by the current amendment.
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 1-12 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.
Regarding claims 1, 5, and 9, the limitation “forms language” is unclear. The term “forms language” is not defined by the claim or specification. The term is also not a recognized term in the art.
For purposes of further examination, Examiner interprets the limitation as the language selected/set in the device for output. This interpretation is made in view of paragraph [0034] of the PG-Pub (US 2025/0200683 A1).
Dependent claims 2-4, 6-8, and 10-12 are rejected by virtue of dependency.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-12 are directed to methods of systems and thus fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent system claim 9 as the claim that represents the claimed invention for analysis and is similar to method claims 1 and 5. Claim 9 recites the limitations of:
9. A computing device for performing a method of extracting objectives and solutions from patent documents, comprising:
at least one processor; and
a memory storing instructions executable by the processor,
wherein the processor is configured to:
extract objectives and solutions from the technical content included in a first patent document using a artificial intelligence (AI) model to extract the objectives and solutions from the first patent document in sentence units, wherein the objectives and solutions of the first patent document are expressed in forms language as set in the computing device;
receive a viewing request for the first patent document;
display the objectives and solutions of the first patent document in response to the viewing request;
search for (i) a plurality of second patent documents having the same or similar solution as the patent document and having different objectives, in response to a searching request for the objective, or (ii) a plurality of second patent documents having the same or similar objective as the patent document and having different solutions, in response to a searching request for the solution,
provide objective of a plurality of second patent documents expressed in forms language as set in the computing device according to the search request for searching request for the objective or solution of a plurality of second patent documents expressed in forms language as set in the computing device according to the search request for searching request for the solution.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Mental Processes”. The claim limitations delineated in bold above recite concepts performed in the human mind (including an observation, evaluation, judgment, opinion), as they set forth or describe extracting objectives and solutions from patent documents and searching and providing similar patent documents. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a concepts performed in the human mind, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. The computing device comprising a processor in claim 9 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 1 and 5 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, the independent claims recite the additional elements of:
Claim 9: computing device comprising a processor
Claims 1 and 5: computing device
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component.
The computing device is recited in conjunction with the use of an AI model. However, the additional element is merely used at a high level as a tool to perform the abstract idea. Furthermore, the recitation of “using” also merely indicates a field of use or technological environment in which the judicial exception is performed. This type of limitation merely confines the use of the abstract idea to a particular technological environment (AI models).
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1, 5, and 9 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification pp. 11-13 about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1, 5, and 9 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 2-4, 6-8, and 10-12 further define the abstract idea that is present in their respective independent claims 1, 5, and 9 and thus correspond to “Mental Processes” and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 1-12 are not patent-eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-3, 5-7, and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Giordano (“Unveiling the Inventive Process from Patents by extracting Problems, Solutions and Advantages with Natural Language Processing", attached) in view of Huang (US 2008/0228725 A1), further in view of Tang (US 2019/0155942 A1).
Regarding claims 1, 5, and 9, Giordano teaches a method and computing device for performing a method of extracting objectives and solutions from patent documents, comprising:
at least one processor (see pg. 3, wherein NLP systems based on transformer-based language models use a processor); and
a memory storing instructions executable by the processor (see pg. 3, wherein NLP systems based on transformer-based language models use a memory);
wherein the processor is configured to:
extract objectives and solutions from the technical content included in a first patent document using a artificial intelligence (AI) model to extract the objectives and solutions from the first patent document in sentence units (see pp. 3-4);
Giordano does not explicitly disclose, but Huang teaches:
receive a viewing request for the first patent document (see Fig. 7A, para. 0032-0033);
display the objectives and solutions of the first patent document in response to the viewing request (see Fig. 7A, para. 0032-0033);
search for (i) a plurality of second patent documents having the same or similar solution as the patent document and having different objectives, in response to a searching request for the objective, or (ii) a plurality of second patent documents having the same or similar objective as the patent document and having different solutions, in response to a searching request for the solution (see Fig. 4, paras. 0030-0036, wherein “in response to a searching request…” does not require the claimed results to be generated in a single direct search, but instead reasonably encompasses an iterative search process performed by the user),
provide objective of a plurality of second patent documents according to the search request for searching request for the objective or solution of a plurality of second patent documents according to the search request for searching request for the solution (see para. 0032-0033).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and device of Giordano to include the features taught by Huang.
One of ordinary skill in the art would have been motivated to make the modification to reduce data-searching time (see Huang, para. 00111).
Giordano does not explicitly disclose, but Tang teaches wherein the documents are expressed in forms language as set in the computing device (see para. 0021, wherein the limitation is interpreted in view of the 35 U.S.C. 112(b) rejection discussed above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and device of Giordano to include the features taught by Tang.
One of ordinary skill in the art would have been motivated to make the modification so that the user is not required to perform translation (see Tang, para. 0021).
Regarding claims 2, 6, and 10, Huang teaches wherein the objectives and solutions of the first patent document and the second patent document are provided in Korean or English as set in computing device (see Figs. 5-6).
Regarding claims 3, 7, and 11, Giordano, as discussed above, teaches extracting objectives of patent documents.
Giordano does not explicitly disclose, but Tang, further teaches translating into one language same as or different from the language as set in the computing device; and comparing the similarity unified in one language (see para. 0002).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Giordano further to include the feature of Tang.
One of ordinary skill in the art would have been motivated to make the modification to enable searches across multilingual versions of a document using a single natural language (see Tang, para. 0002).
Claims 4, 8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Giordano (“Unveiling the Inventive Process from Patents by extracting Problems, Solutions and Advantages with Natural Language Processing", attached) in view of Huang (US 2008/0228725 A1), further in view of Tang (US 2019/0155942 A1), further in view of Sandhu (US 2014/0324808 A1).
Regarding claims 4, 8, and 12, Giordano does not explicitly disclose, but Sandhu teaches switching to an editing tool or an authoring tool that allows the user to review the first patent document upon request; and providing the objectives and solutions of the first patent document along with other information of the first patent document within the editing tool or authoring tool (see para. 0085).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method/system of Giordano further to include the feature of Sandhu.
One of ordinary skill in the art would have been motivated to make the modification to allow users to correct errors (see Sandhu, para. 0085).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bohra (US 2015/0212994 A1) discloses a method for extraction and enrichment of a procedure from a document. The method may include identifying a potential location of a procedure in the document. The method may also include detecting a beginning boundary and an end boundary associated with the identified potential location of the procedure. The method may further include validating a text associated with the identified potential location of the procedure in the document. Additionally, the method may include determining an intent from the identified potential location of the procedure based on at least one of the beginning boundary, the end boundary, a surrounding text associated with the identified potential location of the procedure, a context associated with the document, and a title of the document. The method may also include enriching the procedure based on the determined intent.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693