Notice of Pre-AIA or AIA Status
1. 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
2. This communication is responsive to the amendment filed on 11/06/2025.
3. Claims 4-5, 9, 14-15 and 18-19 are cancelled and claims 22-27 are newly added.
4. Claims 2-3, 6-8, 10-13, 16-17 and 20-27 are currently pending in this Office action. This action is made Final.
Double Patenting
5. While the double patenting rejection based on U.S. Patent No. 10,402,410 is withdrawn, it should be noted that the double patenting rejections based on U.S. Patent No. 11,720,577 and U.S. Patent No. 12,182,142 will be maintained as set forth below.
6. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 25-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,720,577; claims 3, 6-8, 10-11, 13, 17 and 20-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,182,142. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention of the instant application is a similar version of the claimed invention of the above identified U.S. Patent with the similar intended scope.
Claim Rejections - 35 USC § 112
8. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
9. Claims 2, 12, 16 and 22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 2, 12 and 16, these claims recite the limitation of “determining, for each of the plurality of knowledge elements, a strength of a relation between a portion of the respective content and the context term based at least in part on a proximity of the portion of the respective content to the entity within the respective content” [emphasis added] [e.g., lines 5-8 of claim 2]. However, the specification lacks the description regarding these features. Since there is no support in the original disclosure for the claimed limitations, these newly added limitations constitute new matter.
Regarding claim 22, this claim recites the limitation of “wherein the plurality of knowledge elements are associated with a plurality of different categories, wherein selecting the knowledge element comprises selecting a knowledge element associated with a category that corresponds to the context term” [emphasis added] [lines 1-4]. However, the specification lacks the description regarding these features. Since there is no support in the original disclosure for the claimed limitations, these newly added limitations constitute new matter.
10. 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.
11. Claims 22 and 26 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 claim 22, this claim recites the phrase of “a plurality of categories” and “a knowledge element associated with a category” [emphasis added] in lines 2-3. It is noted that the specification discloses in paragraph 0065 that “In some implementations, knowledge elements relating to entities can be associated with one or more attributes…”; and in paragraph 0066 that “Attributes associated with a knowledge element can include an element type associated with the knowledge element… as a news knowledge element, e.g., a post or article about the entity, or can be categorized as another element type.” In view of this disclosure, it appears that the claimed “category” or “categories” refer to “an entity” [recited in claim 2, line 2]. However, it is unclear how and in what manner the claimed “category” or “categories” is related to “an entity”. Clarification is required.
Regarding claim 26, this claim recites the phrase of “a category description” in line 2. Thus, claim 26 is rejected due to the similar reasons set forth regarding claim 22.
Claim Rejections - 35 USC § 101
12. Applicant’s arguments [Remarks filed on 11/06/2025] are not persuasive and the examiner maintains the rejection as set forth below:
13. Claims 2-3, 6-8, 10-13, 16-17 and 20-27 re rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, hereinafter 2019 PEG.
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is noted that the method(s) of claims 2-3, 6-8, 10-13, 16-17 and 20-27 are directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. In accordance with Step 2A, prog one of the 2019 PEG:
In claim 2-3, 6-8, 10-11, 22-25, the limitations include no additional elements; in claims 12-13, the limitations directed to additional elements include: a non-transitory computer-readable medium, an electronic processor; in claims 16-17 and 20-21, the limitations directed to additional elements include: an electronic processor, a memory.
In exemplary claim 2, limitations reciting the abstract idea are as follows:
receiving a search query; (2) identifying a plurality of knowledge elements having content that is associated with the entity; (3) determining a strength of a relation between a portion of the respective content and the context term; (4) performing a weighted adjustment of the respective rank scores of the plurality of knowledge elements; selecting a knowledge element according to the respective adjusted rank score; and (5) providing the selected knowledge element for presentation.
These limitations, under the broadest reasonable interpretation, recite mental processes because these limitations can be performed in the human mind or using pen and paper. The examiner believes that the steps disclosed in claim 1 [receiving data, identifying a plurality of knowledge elements, determining a strength of a relation, performing an adjustment, and providing for presentation] can be performed by a human, using observation, evaluation, and judgment, because the steps involve making identifications and determinations, which are mental tasks humans routinely perform in the course of producing and performing queries.
Claim 12 and 16 recite the similar limitations as claim 2. Thus, claims 12 and 16 are rejected due to the similar reasons set forth regarding claim 2.
A claim recites a mental process when the claim encompasses acts the person can perform using the mind or pen and paper [determining that a claim whose ‘steps can be performed in the human mind, or by a human using a pen and paper’ is directed to an unpatentable mental process]. This is true even if the claim recites, as they do here, that a generic computer component performs the acts.
As noted above, if a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind. Here, the examiner is not persuaded that the aforementioned steps in claims 2, 12 or 16 cannot practically be performed in the human minds, or using pen and paper, but for the generic computing device.
Step 2A. In accordance with Step 2A, prog two of the 2019 PEG:
With respect to Step 2A, prog two, the judicial exception is not integrated into a practical application. The additional elements are directed to a non-transitory computer-readable medium, an electronic processor, a memory. However, these elements do not (1) improve the functioning of a computer or other technology; (2) are not applied with any particular machine (except for a generic computer); (3) do not effect a transformation of a particular article to a different state; and (4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. In other words, the aforementioned additional element (or combination of elements) recited in the claims do not integrate the judicial exception into a practical application.
In other words, the claimed processes fail to improve the functioning of either a non-transitory computer-readable medium, an electronic processor, a memory. Rather, these additional elements merely link the underlying abstract idea (i.e., mental processes or using pen and paper) to a particular technological environment, i.e., search query processing. Thus, the claimed process uses conventional computers to automate tasks that would have otherwise been very labor intensive by a human searcher. Such claims are not patent eligible. See OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”).
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional limitations are directed to a non-transitory computer-readable medium, an electronic processor, a memory, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. Such general-purpose computing device, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible.
The additional elements are broadly applied to the abstract idea at a high level of generality and they operate in a well-understood, routine, and conventional manner. Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amount to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog.
The dependent claims have been fully considered, however, similar to the findings for claims above, these claims are similarly directed to the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG, without integrating it into a practical application and with, at most, a general-purpose computer that serves to tie the idea to a particular technological environment, which does not add significantly more to the claims. The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions merely provide conventional computer implementation. Accordingly, the subject matter encompassed by the dependent claims fail to amount to significantly more than the abstract idea.
Claim Rejections - 35 USC § 103
14. 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 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.
15. 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.
16. Claims 2, 6-8, 10-12, 16 and 20-25 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2013/0311458 (hereinafter Goel) in view of U.S. 8,990,208 (hereinafter Wang).
Regarding claims 2, 12 and 16, Goel discloses a computer-implemented method comprising:
receiving a search query that includes an entity and a context term related to the entity ([0069-0070]; fig. 2; “An entity referenced by the search query is identified (204). For example, the knowledge panel apparatus 130 may identify the entity by comparing text included in the search query to search queries that have been deemed to reference a set of known entities. In some implementations, the set of known entities--and any aliases for the known entities--is stored in the content item data store 134 with a reference to the search queries (or other data) that have been deemed to reference the known entities…”);
identifying a plurality of knowledge elements having content that is associated with the entity, the plurality of knowledge elements having respective associated ran scores based at least in part on a relationship between the respective content and the entity ([0010, 0048 and 0071]; "Magnificent". In this example, a reference to the famous singer in the data store 134 can include a reference to both "Ima Singer" and "Magnificent", such that the famous singer is identified as the entity being referenced by search queries that match either of those names. The knowledge panel apparatus 130 can compare the text of the search query to each known entity and their aliases to identify any entities that are referenced in the search query.…”);
selecting a knowledge element from the plurality of knowledge elements [according the respective adjusted rank score] ([0072-0073]; “Standard content items for the knowledge panel are identified (206). In some implementations, a knowledge panel may include standard content for each entity or each type of entity. For example, each knowledge panel may include a title, a canonical image for the entity, a description of the entity, and one or more facts about the entity…”); and
providing, in response to the search query, a knowledge panel including the selected knowledge element in a search results page ([0096 and 0102]; figs. 3 and 4; “FIG. 4 is a screen shot of an example search interface 400 in which a knowledge panel 420 is presented…The search interface 400 also includes a query initiation element 407 with which the search query 409 can be submitted to the search system 120…”).
Goel does not explicitly disclose the feature of determining, for each of the plurality of knowledge elements, a strength of a relation between a portion of the respective content and the context term based at least in part on a proximity of the portion of the respective content to the entity within the respective content; performing a weighted adjustment of the respective rank scores of the plurality of knowledge elements based at least in part on the respective strength of the relation; and selecting a knowledge element from the plurality of knowledge elements according the respective adjusted rank score. However, Wang discloses that “Particular embodiments may index the individual terms in each collection of text (e.g., document). The indexing may be used for searching specific terms in the documents…” (col. 3, lns. 63-col. 4, lns. 4). Wang also discloses that “Particular embodiments may cluster the documents in X's information collection into a number of topics based on their respective similarity degrees, as illustrated in STEP 350. Each topic may be a particular subject matter. For example, one topic may relate to sports, another topic may relate to travel, and a third topic may relate to computer programming. Similar documents, as indicated by their similarity values, may be assigned to the same topic…” (col. 6, lns. 34-41). In addition, Wang discloses that “For each pair of individuals who share one or more common-interest topics, particular embodiments may determine a common-interest strength between the two individuals, as illustrated in STEP 530. Between two individuals (e.g., X and Y) who share one or more common-interest topics, the common-interest strength measures the strength of their connection (e.g., within the information-based social network)…” (col. 9, lns. 42-50) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Wang in the system of Goel in view of the desire to enhance the resource searching system by utilizing the score adjusting scheme on the similarity resulting in improving the efficiency of providing the search results. Goel additionally discloses a non-transitory computer-readable medium storing instructions that when executed by an electronic processor; a system comprising: an electronic processor; and a memory ([0125]).
Regarding claims 6 and 20, Goel in view of Wang discloses the computer-implemented method further comprising:
before selecting the knowledge element, further adjusting the rank scores of the plurality of knowledge elements based on a respective generation date (Goel: [0093]) and (Wang: col. 4, lns. 34-44). Therefore, the limitations of claims 6 and 20 are rejected in the analysis of claims 2 or 16, and the claims are rejected on that basis.
Regarding claim 7, Goel in view of Guha discloses the computer-implemented method further comprising:
before selecting the knowledge element, further adjusting the respective rank scores of each of the plurality of knowledge elements based on a user profile (Goel: [0055 and 0093]) and (Wang: col. 7, lns. 29-48). Therefore, the limitations of claim 7 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
Regarding claims 8 and 21, Goel in view of Wang discloses the computer-implemented method further comprising:
determining an entity identifier and a context term identifier that uniquely identifies the entity and the context term respectively, wherein the plurality of knowledge elements are identified based on the entity identifier and the context term identifier (Goel: [0032 and 0045-0046]).
Regarding claim 10, Goel in view of Wang discloses the computer-implemented method wherein altering the appearance includes changing a font or a background color of the portion of the content (Wang: col. 7, lns. 29-67). Therefore, the limitations of claim 10 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
Regarding claim 11, Goel in view of Wang disclose the computer-implemented method wherein changing the font includes bolding the portion of the content (Wang: col. 7, lns. 29-67). Therefore, the limitations of claim 11 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
Regarding claim 22, as far as the claim is understood, Goel in view of Wang disclose the computer-implemented method wherein the plurality of knowledge elements are associated with a plurality of different categories and wherein selecting the knowledge element comprises selecting a knowledge element associated with a category that corresponds to the context term (Goel: [0078-0079]) and (Wang: col. 6, lns. 58-64). Therefore, the limitations of claim 22 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
Regarding claim 23, Goel in view of Wang disclose the computer-implemented method wherein selecting the knowledge element is further according to rank score threshold (Wang: col. 6, lns. 34-57). Therefore, the limitations of claim 23 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
Regarding claim 24, Goel in view of Wang disclose the computer-implemented method wherein providing the selected knowledge element includes providing a knowledge panel including the selected knowledge element in a search result page (Goel: [0104-0106]; fig. 4).
Regarding claim 25, Goel in view of Wang disclose the computer-implemented method further comprising altering an appearance of the portion of the content included in the selected knowledge element, the portion of the content having a relation to the context term (Goel: [0045]) and (Wang: col. 7, lns. 29-67). Therefore, the limitations of claim 25 are rejected in the analysis of claim 2, and the claim is rejected on that basis.
17. Claims 3, 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Goel in view of Wang, and further in view of U.S. 2015/0100562 (hereinafter Kohlmeier).
Regarding claims 3, 13 and 17, Goel in view of Wang discloses the computer-implemented method wherein the search query includes a plurality of context terms, and the plurality of context terms includes the context term related to the entity, the computer-implemented method further comprising: processing the search query, and comparing the search query to a set of known context terms that are related to the entity to identify the search query related to the entity as related to the entity (Goel: [0025 and 0038-0040]).
Goel does not explicitly disclose the features of processing the search query to identify the plurality of context terms; and each context term of the plurality of context terms. However, such features are well known in the art as disclosed by Kohlmeier ([0038 and 0047]) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Kohlmeier in the modified system of Goel in view of the desire to enhance the resource searching system by utilizing the input information resulting in improving the efficiency of providing the search results.
18. Claims 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Goel in view of Wang, and further in view of U.S. 2014/0063042 (hereinafter Hernandez).
Regarding claim 26, Goel in view of Wang disclose the computer-implemented method wherein the selected knowledge element includes a category description (Goel: fig.4) and (Wang: col. 4, lns. 5-17). The references do not explicitly disclose the feature of wherein altering the appearance includes inserting the context term into the category description. However, such feature is well known in the art as disclosed by Hernandez ([0021 and 0044]; “By way of example, assume that user input specified a change to the text object 314. For example, assume that the text object was changed from "Incorporating the latest in widget designs" to "Incorporating the latest in widget designs by Widget Co."…”) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Hernandez in the modified system of Goel in view of the desire to enhance the resource searching system by utilizing the specific displaying configuration resulting in improving the efficiency of providing the updated results.
Regarding claim 27, Goel in view of Wang disclose the computer-implemented method wherein the selected knowledge element includes a list of items (Goel: fig. 4). The reference does not explicitly disclose the feature of wherein altering the appearance includes repositioning an item in the list that is related to the context term to a more prominent position in the list. However, such feature is well known in the art as disclosed by Hernandez ([0021 and 0055]; “The change will result in a change in the display dimensions of the image object and the content data defining the content of the object--e.g., pixel data--and the change may also change the display position of the object"…”) and it would have been obvious for one with ordinary skill in the art to utilize the teachings of Hernandez in the modified system of Goel in view of the desire to enhance the resource searching system by utilizing the specific displaying configuration resulting in improving the efficiency of providing the updated results.
Response to Arguments
19. Applicant’s arguments have been considered but are deemed to be moot in view of new grounds of rejection presented in this Office action.
Conclusion
20. 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 MONICA M PYO whose telephone number is (571)272-8192. The examiner can normally be reached Monday-Friday 8am-4pm.
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/MONICA M PYO/ Primary Examiner, Art Unit 2161