Detailed Action
This action is in response to amendments filed on 05/04/2026.
This application was filed on 02/16/2025 which is a Continuation of application no. 18786527, filed 07/28/2024 which further claims foreign priority to Australian application no. 2023210538, filed 07/31/2023.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
Claims 1-20 are rejected.
Applicant's Response
In Applicant's Response dated 05/04/2026, Applicant amended claims 1-2, 11-12, and 16-18. Applicant argued against various rejections previously set forth in the Office Action mailed on 01/05/2026.
Information Disclosure Statement
The information disclosure Statement (IDS) submitted on 05/04/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS statements are being considered by the examiner.
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 is rejected under 35 U.S.C. 101 as being directed to abstract idea without significantly more.
Representative claim 1 is directed to a computer implemented method including:
accessing a set of input paragraphs, wherein each input paragraph is associated with one or more format attributes, and wherein the one or more format attributes of each input paragraph includes a font size attribute;
generating, by one or more computer processing devices, an ordered set of input paragraph identifiers, wherein each input paragraph identifier identifies a single input paragraph of the set of input paragraphs, and wherein the ordered set of input paragraph identifiers is ordered based on the font size attributes associated with each input paragraph; and
progressively subdividing, by the one or more computer processing devices, the ordered set of input paragraph identifiers into a set of input paragraph subgroups, wherein the progressive subdividing is based on the one or more format attributes of the one or more input paragraphs and on completion each input paragraph subgroup defines a different text hierarchy level.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely,
Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper (see, October 2019 Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942, hereinafter “PEG”).
For instance, humans can mentally and/or via aid of pen/paper perform a method including: mentally generating with aid of pen/paper an ordered set of input paragraph identifiers, wherein each input paragraph identifier identifies as single input paragraph of the set of input paragraphs, and wherein the ordered set of input paragraph identifiers is ordered based on the font size attributes associated with each input paragraph (e.g. mentally/visually observing and organizing data); and progressively subdividing, mentally with aid of pen/paper, the ordered set of input paragraph identifiers into a set of input paragraph subgroups, wherein the progressive subdividing is based on the one or more format attributes of the one or more input paragraphs and on completion each input paragraph subgroup defines a different text hierarchy level.
Per prong 2, Step 2A, the additional non-emphasized elements as noted above are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception; are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(f, g, h). For instance,
“computer implemented… by one or more computer processing devices” - are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(f, h).
“accessing a set of input paragraphs, wherein each input paragraph is associated with one or more format attributes, and wherein the one or more format attributes of each input paragraph includes a font size attribute” - are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception- see MPEP 2106.05(g).
Additionally, the recited claim limitations do not improve the functionality of the electronic device or achieve improved technical results.
Per Step 2B, the additional non-emphasized elements as noted above are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception; are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use; and/or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality- see MPEP 2106.05(d, f, g, h).
“computer implemented… by one or more computer processing devices” - are merely adding words “apply it” (or an equivalent) with the judicial exception/mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea; Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(f, h).
“accessing a set of input paragraphs, wherein each input paragraph is associated with one or more format attributes, and wherein the one or more format attributes of each input paragraph includes a font size attribute” - are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception, and/or simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality see MPEP 2106.05(d, g).
Additionally, the recited claim limitations do not improve the functionality of the electronic device or achieve improved technical results. Accordingly, the above limitations singularly or in combination do not result in the claim as a whole amounting to significantly more than the judicial exception.
Accordingly, claim 1 is rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Independent claims 11 and 16 are system/medium claims corresponding to method claim 1 and are of substantially same scope.
Accordingly, claims 11 and 16 are rejected under the same rational as set forth for claim 1.
Dependent claims 2-10, 12-15, and 17-20, when considered individually or in combination per steps as noted above, are rejected under the same rational as set forth above for claims 1, 11, and 16. In particular,
As per claim 2, the rejection of claim 1 further incorporated, further recites wherein progressively subdividing the ordered set of input paragraph identifiers includes performing a first-in-order subdivision in which the ordered set of input paragraph identifiers are grouped into subgroups based on font size.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 3, the rejection of claim 2 further incorporated, further recites wherein: progressively subdividing the ordered set of input paragraph identifiers includes performing a second-in-order subdivision; and the second-in-order subdivision includes subdividing the subgroups of input paragraph identifiers that are in the ordered set of input paragraph identifiers following the first-in- order subdivision based on a first format type.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 4, the rejection of claim 3 further incorporated, further recites wherein the first format type is list indentation.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 5, the rejection of claim 3 further incorporated, further recites wherein: progressively subdividing the ordered set of input paragraph identifiers includes performing a third-in-order subdivision; and the third-in-order subdivision includes subdividing the subgroups of input paragraph identifiers that are in the ordered set of input paragraph identifiers following the second-in- order subdivision based on a second format type.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 6, the rejection of claim 5 further incorporated, further recites wherein the second format type is underline.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 7, the rejection of claim 6 further incorporated, further recites wherein: progressively subdividing the ordered set of input paragraph identifiers includes performing a fourth-in-order subdivision; and the fourth-in-order subdivision includes subdividing the subgroups of input paragraph identifiers that are in the ordered set of input paragraph identifiers following the third-in- order subdivision based on a third format type.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 8, the rejection of claim 7 further incorporated, further recites wherein the third format type is all- caps.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 9, the rejection of claim 7 further incorporated, further recites wherein: progressively subdividing the ordered set of input paragraph identifiers includes performing a fifth-in-order subdivision; and the fifth-in-order subdivision includes subdividing the subgroups of input paragraph identifiers that are in the ordered set of input paragraph identifiers following the fourth-in- order subdivision based on a fourth format type.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claim 10, the rejection of claim 1 further incorporated, further recites wherein the fourth format type is bold.
Per prong 1, Step 2A, the above emphasized element/concepts are not meaningfully different than those concepts found by the courts to be abstract, namely, Mental Processes including concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or humans using pen and paper.
Per prong 2, Step 2A and 2B, the additional elements (e.g. non-emphasized elements) are mere data gathering/sending steps/insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g) and/or are merely adding words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(d, f, g, h).
As per claims 12-14, and 17-20:
Claims 12-14, and 17-20 are system and medium claims corresponding to method claims 2-5 and are of substantially same scope.
Accordingly, claims 12-14, and 17-20 are rejected under the same rational as set forth for claims 2-5.
Accordingly, claims 1-20 are rejected under 35 U.S.C. 101 as being directed to abstract idea.
Allowable Subject Matter
Claims 1-20 would allowable if above noted rejections are overcome via amendments/arguments. Reasons for allowance will be held in abeyance until all matters in the prosecution are closed.
Response to Arguments
Applicant’s arguments filed on 05/04/2026 have been fully considered but they are not persuasive and/or moot in view of new/modified grounds of rejections.
Applicant argues that the claimed invention is eligible and specifically argues 1) input paragraphs are not human-readable text passages, 2) a human cannot practically access, read, generate (text/content/formatting) for potentially large set of paragraphs (response page 8-9).
The examiner disagrees.
Firstly, as shown in figure 34 of instant application, the example input paragraphs are clearly human readable and a human can extract document structure/content which is a mental step.
Secondly, the claim language does not specify amount or size of input paragraphs, and under broadest reasonable interpretation, human can reasonably extract document structure/content and/or make various analysis/determinations (e.g. identify, divide etc.) based on exemplary figure 34 input paragraphs.
Accordingly, applicant arguments are not persuasive and/or moot in view of modified grounds of rejections.
Applicant argues that the claimed invention is eligible and specifically argues 1) claimed in invention recites specific technical process which reflects technical design choice developed to solve technical problem of automatically extracting document structure from existing format data, 2) output of method 3300 is used as part of method 500/800 which drives template selection, content mapping, and conflict resolution. (response page 9-10)
The examiner disagrees.
Firstly, extracting document structure/content is a mental step.
Secondly, the claim language does sufficiently connect or recite any steps that improves functionality a computing device as indicated by the applicants’ arguments and purported to be supported by the specification. Merely reciting output of mental step is not an improvement to the computing device and/or technical field.
Accordingly, applicant arguments are not persuasive and/or moot in view of modified grounds of rejections.
Applicant argues that the claimed invention is eligible and specifically argues 1) achieve a specific technical result (e.g. determining meaningful hierarchical organization of text), 2) and making is available for use in further technical process. (response page 11-12).
The examiner disagrees.
Firstly, extracting document structure/content is a mental step.
Secondly, the claim language does sufficiently connect or recite any steps that improves functionality a computing device as indicated by the applicants’ arguments and purported to be supported by the specification. Merely reciting output of mental step is not an improvement to the computing device and/or technical field.
Accordingly, applicant arguments are not persuasive and/or moot in view of modified grounds of rejections.
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
See form 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MUSTAFA A AMIN whose telephone number is (571)270-3181. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Young, can be reached on 571-270-3180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MUSTAFA A AMIN/ Primary Examiner, Art Unit 2194
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