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 Rejections - 35 USC § 101
Claims 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 21
Step 1, This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The claim recites a method that performs at least one step. Thus, the claim is to a process, which is one of the statutory categories of invention. (Step 1: YES).
Step 2A - Prong One: This part of the eligibility analysis evaluates whether the claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim "recites" a judicial exception when the judicial exception is "set forth" or "described" in the claim.
Step "determining, using at least one processor, one or more features associated with an electronic document in response to detecting interaction with the electronic document via an electronic document interface" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., at least one processor, electronic document interface). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses a person interacts with a document and determining, observing, judging one or more of its features (e.g., font size, a type of document, and so on). Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment).
Step "applying, using the at least one processor, a machine learning model trained using one or more historical sample features of one or more historical electronic documents" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., at least one processor, machine learning model). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses a person applying what they learned from the sample features of old documents (e.g., if the current document has the same classification, they may be stored the same location). Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment)
Step "identifying, using the at least one processor, using the machine learning model, one or more actions to be performed on the electronic document based on a content of the electronic document and one or more historical actions performed on the one or more historical electronic documents" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., at least one processor, machine learning model). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses a person evaluating the document and actions performed on old documents and identifying actions to perform on the documents. For instance, previous documents had some typo errors and deleted, so the current document has the same typo then the typo gets deleted. Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment)
"Unless it is clear that a claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse the claim into multiple exceptions, particularly in claims involving abstract ideas." MPEP 2106.04, subsection II.B. However, if possible, the examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. "For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record." MPEP 2106.04, subsection II.B. Here, the mentioned steps fall within the mental process grouping of abstract ideas and are considered together as a single abstract idea for further analysis. (Step 2A, Prong One: YES).
The claim recites the additional elements/limitations:
modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions
receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document;
modifying, using the at least one processor, the electronic document in response to the executing; and
generating, using the at least one processor, based on the modifying, a modified electronic document.
"at least one processor" → generic computer component; "machine learning model" → generic computer component; "electronic document interface" → generic computer component; "electronic element" → generic computer component
a) MPEP § 2106.05(a) "Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field."
There is no improvement to Functioning of a Computer or to Any Other Technology or Technical Field. The recited "at least one processor," "machine learning model," "electronic document interface," and "electronic element", “modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions”, “receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document”, “modifying, using the at least one processor, the electronic document in response to the executing”, “generating, using the at least one processor, based on the modifying, a modified electronic document” make no improvement to the functioning of a computer or to any other technology. They do not make the computer faster, more accurate, or more efficient.
b) MPEP § 2106.05(b) Particular Machine. The judicial exception does not apply to any particular machine.
The claim is silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet, nor do applicant direct examiner’s attention to such specific limitations. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. at 223; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network' or on a generic computer is still an abstract idea."). Applying this reasoning here, the claim is not directed to a particular machine, but rather merely implement an abstract idea using generic computer components such as "at least one processor," "machine learning model," "electronic document interface," and "electronic element" Thus, the claims fail to satisfy the "tied to a particular machine" prong of the Bilski machine-or-transformation test.
c) MPEP § 2106.05(c) Particular Transformation.
None of the recited "at least one processor," "machine learning model," "electronic document interface," or "electronic element", ", “modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions”, “receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document”, “modifying, using the at least one processor, the electronic document in response to the executing”, “generating, using the at least one processor, based on the modifying, a modified electronic document” transforms any article into a different state or thing. They only manipulate data. The steps are not a "transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter[.]" See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere manipulation or reorganization of data ... does not satisfy the transformation prong."). Applying this guidance here, the claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test.
d) MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides: Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175, ... (1981). In Diehr, the claim was directed to the use of the Arrhenius equation ( an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78 .... The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184... In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S._ .... In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., "implementation via computers") or were well-understood, routine, conventional activity. MPEP § 2106.05(e). The generic computer components “at least one processor," "machine learning model," "electronic document interface, " and "electronic element" impose no meaningful limit on the abstract idea. “Modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions” [Wingdings font/0xF3] adding buttons, options, filters to the interface; “receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document” [Wingdings font/0xF3] select a button to delete remove insert, “modifying, using the at least one processor, the electronic document in response to the executing” [Wingdings font/0xF3] adding delete text to the document , “generating, using the at least one processor, based on the modifying, a modified electronic document” [Wingdings font/0xF3] after adding delete text from the document. The limitations are not meaningful limitations.
e) MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The limitation Modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions” [Wingdings font/0xF3] adding buttons, options, filters to the interface; “receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document” [Wingdings font/0xF3] select a button to delete remove insert, “modifying, using the at least one processor, the electronic document in response to the executing” [Wingdings font/0xF3] adding delete text to the document , “generating, using the at least one processor, based on the modifying, a modified electronic document” [Wingdings font/0xF3] after adding delete text from the document. They are insignificant extra-solution activity.
6) MPEP § 2106.05(h) Field of Use and Technological Environment.
The recited "at least one processor", "machine learning model", "electronic document interface", and "electronic element" limit the abstract idea to the named technological environment only.
Accordingly, the additional limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations modifying, using the at least one processor, the electronic document interface to include an electronic element identifying the one or more actions” [Wingdings font/0xF3] adding buttons, options, filters to the interface; “receiving, using the at least one processor, using the electronic element, a selection of at least one action in the one or more action and executing the at least one action on the electronic document” [Wingdings font/0xF3] select a button to delete remove insert, “modifying, using the at least one processor, the electronic document in response to the executing” [Wingdings font/0xF3] adding delete text to the document , “generating, using the at least one processor, based on the modifying, a modified electronic document” [Wingdings font/0xF3] after adding delete text from the document. The recited "at least one processor," "machine learning model," "electronic document interface," and "electronic element" are generic. They serve only as generic labels for tools that implement the abstract idea. Taking these limitations as an ordered combination adds nothing that is not already present when the elements are taken individually. Therefore, the claim does not amount to significantly more than the recited abstract idea. The claim is not patent eligible.
Claim 22 depends on claim 21 and includes all the limitations of claim 21. Claim 22 recites “wherein the one or more actions are identified based on a type of the electronic document” Determine actions based on the type of document is a mental process which is an abstract idea. The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claim 23 depends on claim 22 and includes all the limitations of claim 22. Claim 23 recites “wherein the type of the electronic document is determined by the machine learning model using one or more features of the electronic document.” The “machine learning model” is recited at high level of generality to determine the type of the document based on feature/content of the document. The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claim 24 depends on claim 23 and includes all the limitations of claim 23. Claim 24 recites “wherein the one or more features of the electronic document include at least one of: one or more terms used within the electronic document, one or more clauses used within the electronic document, one or more images within the electronic document, one or more entities associated with the electronic document, one or more permissions associated with the electronic document, one or more actions taken on the electronic document, one or more templates used to generate the electronic document, one or more characteristics of one or more entities, one or more characteristics of one or more entities associated with the electronic document, or any combination thereof The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claim 25 depends on claim 21 and includes all the limitations of claim 21. Claim 25 recites “wherein the electronic document interface is generated on a computing device.” The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claim 26 depends on claim 21 and includes all the limitations of claim 21. Claim 26 recites “wherein the one or more actions include at least one of: replacing text with one or more fields of the electronic document, replacing one or more clauses of the electronic document with one or more pre-approved versions of the one or more clauses, synchronizing the electronic document with a third-party computing system.” The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claim 27 depends on claim 26 and includes all the limitations of claim 26. Claim 27 recites “wherein the one or more actions are determined based on at least one of: one or more actions executed by one or more entities, one or more actions executed with respect to one or more another electronic documents similar to the electronic document, one or more contextually similar actions.” The claim does not have any addition limitation that amount to significantly more than the abstract idea.
Claims 28-40 are similar to claim 21-27. The claims are rejected based on the same reasons.
Response to Arguments
Section 35 U.S.C. 101 – pg. 12 – 13
Applicant argues that “… In particular, a human mind is not an electronic document interface that is generated (e.g., using various graphical computing processes) that includes certain electronic document interface elements, where the elements correspond to one or more actions. The actions are identified through application of a trained machine learning model (e.g., trained using historical documents and/or features and/or actions) to one or more features with the electronic document that are determined in response to detecting interaction with the electronic document via an electronic document interface. The machine learning model identifies such actions based on a content of the electronic document and one or more historical actions performed on one or more historical electronic documents. Once such actions are identified, the current subject matter modifies the electronic document interface to include the electronic element that identifies such actions. Upon receiving, using such electronic element, a selection of at least one action, the current subject matter executes the selected action on the electronic document. These actions are simply not within the realm of the human mind nor are they a mathematical concept…”
Applicant argues that a human mind is not an electronic document interface including electronic document interface elements (e.g., buttons, menu, clickable items), and human mind cannot run a machine learning model. The Applicant’s argument has been considered; however, examiner respectfully disagrees.
The claim lists these literal steps: detecting when a user interacts with an electronic document, determining the features of that document, applying a machine learning model that was trained on historical features from past documents, identifying an action to perform based on the document's content and past historical actions, modifying the interface to include an electronic element (like a button) that shows the action, receiving a user selection through that element and executing the action, modifying the document and generating a modified electronic document.
The steps represent a basic workflow that can be practically performed in the human mind or with pen and paper
The computer screen and the machine learning model are just electronic tools doing the steps. Because using a computer tool to automate a basic workflow does not change how the computer itself works, the core concept remains an unpatentable abstract idea.
Applicant argues in pg. 13-14, “… The claimed process, as recited in claim 21, is clearly rooted in computing technology and is designed to reduce complexity, improve operating speed of computing systems, and reduce consumption of computing resources by through use of machine learning models for the purposes of generation of modified electronic document via modification of electronic document interfaces. For at least the reasons stated above, it is entirely unclear how a human mind is able to operate a computing system that is capable of executing functions associated with a machine learning model (as recited in claim 21) or generating of electronic document interfaces or modifying of such interfaces to include electronic elements. Again, a human mind is not a machine-learning model nor a modifiable computing interface. Hence, the combination of the above steps along with all the underlying multiple-purpose programmable hardware and software components/networks (e.g., programmable processors, memory, etc.), etc. are entirely outside the realms of a human brain or a mathematical concepts… Clearly, claim 21 amounts to significantly more than the alleged abstract idea. In particular, the current subject matter, as recited in claim 21, is directed to improvement of a functioning of a computer as well as solving a technical problem of executing functions associated machine learning models for the purposes of generation of modified electronic documents and generation of electronic interfaces and detecting interactions therewith. As stated above, this has numerous benefits, such as, for example, reducing computing resources through use of machine learning models, among some of the benefits discussed above. Nothing about the combination of these process steps is abstract. The current subject matter constitutes an improvement to the technical field of execution of functions associated with machine learning models and goes beyond mere abstract idea. As such, claim 21 recites significantly more than an abstract idea.
Applicant’s argument has been considered; examiner respectfully disagrees.
The Applicant claims that the invention is a technical improvement because it makes computers run faster and saves computer resources. However, these benefits are not actually written into the text of the claim. The claim only lists completely standard computer parts like "a processor" and "an interface." Further, generation of modified electronic documents and generation of electronic interfaces and detecting interactions do not fix an internal computer error or change how a computer operating system processes data. Therefore, the idea is not integrated into a practical application.
Applicant argues in pg. 14-15 “… Additionally, the Federal Circuit has re-iterated and re-emphasized that claims are not abstract under 35 U.S C 101 for providing "a specific solution to then-existing technological problems in computers." In Ancora Technologies, the Court held that claim 21 was not directed to an abstract idea because the claim addressed a technological problem with computers. 6 More specifically, the Court stated "improving security can be a non-abstract computer-functionality improvement if done by a specific technique that departs form earlier approaches to solve a specific computer problem." Similar to claim 21 of Ancora Technologies, the claims in the present application address a technological problem of using various computing, storage, networking, and other components to execute various functions associated with machine learning models, generate and/or modify electronic interfaces. This technique departs from earlier approaches that were too restrictive, whereas the present application provides a solution to this problem…”
Applicant’s argument has been considered; however, examiner respectfully disagrees because Ancora Technologies, the Court held that "improving security can be a non-abstract computer-functionality improvement if done by a specific technique that departs form earlier approaches to solve a specific computer problem." Claim 21 of the instant application does not make computers more secure, and it does not invent a brand-new type of artificial intelligence architecture. It takes standard, existing machine learning tools and standard computer screens and uses them as a "black box" to automate abstract steps.
Applicant argues in pg. 16 “…Claim 21 embodies at least one practical application of the invention, i.e., an ability to reduce consumption of computing resources (i.e., improvement in the functioning of a computer) through use of trained machine learning models to generate modified electronic documents as a result of operations recited in claim 21. Thus, claim 21, when practically applied, solves a particular technical problem. In particular, claim 21 applies the judicial exception with, or by use of, a particular machine (as per MPEP 2106.05(b)), which in this case includes programmable processor(s), data store(s), network equipment, etc. that are capable of providing such machine learning model. This is clearly a highly technical process that goes beyond mere "abstract ideas". The subject matter recited in claim 21 clearly effects transformation or reduction of a particular article to a different state or thing (as per MPEP 2106.05(c))…”
Applicant argument has been considered; however, examiner respectfully disagrees. The Applicant claims that the invention is a technical improvement because it makes computers run faster and saves computer resources. However, these benefits are not actually written into the text of the claim. The claim only lists completely standard computer parts like "a processor" and "an interface." They do not fix an internal computer error or change how a computer operating system processes data. Therefore, the idea is not integrated into a practical application.
Applicant argues in pg. 18 “… In the present application, elements of claim 21 are not well-understood, routine or conventional. In particular, it is respectfully submitted that the combination of elements recited in claim 21 is not well-understood, routine or conventional. No admission that the combination of these elements (or each of the elements separately) is well-understood, routine, or conventional was made. The specification does not indicate that the combination of the elements recited in claim 21 are well-understood, routine or conventional. No publication demonstrates that the combination is well-understood, routine, or conventional. Further, the Examiner has not taken any Official Notice to that regard. Thus, the combination of functionalities recited in claim 21 and performed by the structural components recited therein are clearly not well-understood, routine, or conventional and the Office Action fails to meet its burden under Step 2B and MPEP 2106. In view of the above, claim 21 does not recite (a) a fundamental economic practice, (b) mathematical relationships or formulas, (c) certain methods of organizing human activity, or (d) an idea 'of itself. Claim 21 is clearly directed to a technical process that, along with technological components (e.g., programmable processor(s), data store(s), networking elements, etc.), involves separate processing, programming, etc. that along with various specific rules provide an ability to process information, transform it from one state to the other, etc. to execute various programmable logic associated with execution of functions associated with machine learning models. Such technical processes/system are clearly not a mental process or a mathematical concept. Therefore, claim 21 should not be deemed abstract. Thus, claim 21 recites patent-eligible subject matter under 35 U.S.C. 101. As such, the Examiner's rejection is respectfully traversed and should be withdrawn…”
Applicant has been considered; however, examiner respectfully disagrees. An examiner may establish that claim elements are well-understood, routine, and conventional when the claim text itself describes the elements at a high level of generality as generic computer components. MPEP 2106.05(d)(I)). Claim 21 does not disclose a new technical architecture, a novel programming technique, or a unique physical structure. Instead, the claim merely recites entirely generic, functional computer steps performing their basic, inherent roles. Specifically, using a processor to execute a model, updating a user interface to display an electronic element (like a menu option or button), receiving a user selection, and saving an updated document file represent the conventional behavior of any standard word editing application. Also, claim 21 recites entirely generic terms such as 'at least one processor', 'an electronic document interface', and 'an electronic element' without any specific technical structure or novel hardware modifications. Because the claim text itself defines these components by their generic, functional roles, no separate publication or prior art document is required to demonstrate their conventional nature." Furthermore, Applicant’s reliance on BASCOM Global Internet v. AT&T Mobility is misplaced. Unlike BASCOM, which recited a highly specific, non-conventional arrangement of filtering tools to solve a network bottleneck, the ordered combination of Claim 21 is a completely standard, chronological software loop (analyzing data, displaying a choice, and saving the output). Applicant argues that the invention utilizes "various specific rules" to transform information, no such specific rules are recited in the literal text of Claim 21. The claim relies on a generic "machine learning model" as a functional black box to automate a traditional human document review workflow. Because the additional elements, taken both individually and as an ordered combination, do nothing more than instruct the user to apply an abstract idea on a generic computer system, the claim lacks an inventive concept. The rejection under 35 U.S.C. 101 is maintained.
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.
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 HAU HAI HOANG whose telephone number is (571)270-5894. The examiner can normally be reached 1st biwk: Mon-Thurs 7:00 AM-5:00 PM; 2nd biwk: Mon-Thurs: 7:00 am-5:00pm, Fri: 7:00 am - 4:00pm.
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HAU HAI. HOANG
Primary Examiner
Art Unit 2154
/HAU H HOANG/Primary Examiner, Art Unit 2154
Prosecution Insights