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 .
The instant application having Application No. 19/084,042 filed on 11/30/2023 is presented for examination by the Examiner. Claims 1-20 are currently pending in the present application.
Drawings
The drawings filed 03/19/2025 are accepted for examination purposes.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of the U.S. Patent No. 12,282,476 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the instant application substantially recite the limitations of claims 1-17 of the U.S. Patent No. 12,282476 B1.
Therefore, it would have been obvious to one of ordinary skill in the art of data processing at the time the invention was made to modify the invention as claimed in the instance application by substituting determine an embedding for each of the search terms with determine a group code of the plurality of group codes based on the search terms and the stored composite embeddings.
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per claim 1, the claim recites “A system comprising:
a memory storing processor-executable program code,” (); and
at least one processing unit to execute the processor-executable program code to
cause the system to:
receive a plurality of item descriptions, each of the plurality of item descriptions
associated with a respective hierarchical code which includes a plurality of group codes;
extract a respective plurality of phrases from each item description;
determine a phrase embedding for each of the respective plurality of phrases
extracted from each item description;
for each item description, assign each phrase embedding determined for each of
the respective plurality of phrases extracted from the item description to each of the
plurality group codes included in the hierarchical code associated with the item
description;
generate a composite embedding for each of the plurality of group codes based on
the phrase embeddings assigned to the group code;
store each composite embedding in association with the group code for which the
composite embedding was generated;
receive a search query including search terms;
determine a group code of the plurality of group codes based on the search terms
and the stored composite embeddings; and
generate search results based on the search query and the group code”.
Step 1 : Statutory Category
Claim 1 discloses a system which is a machine within the meaning of the section.
Step 2A - Prong One: Judicial Exception Recited
The claim recites the limitations “determine” and “generate” which specifically recite “determine a phrase embedding for each………each item description and determine a group code………composite embeddings” and “generate a composite embedding………...the group code and generate search results……..the group code”. These limitations are processes that, under their broadest reasonable interpretation, cover performance of the limitation in the mind, but for the recitation of generic computer components. That is, other than reciting “processor”, nothing in the claim element precludes the steps from practically being performed in a human mind or with the aid of pen or paper. For example, “generate” in the context of this claim encompass a user mentally, and with the aid of pen and paper looking at the data items/records and identify the relevant ones.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A - Prong Two: Integrated into a Practical Application
The claim recites the additional elements “receive a plurality of item descriptions.…….group codes and receive a search query including search terms”. The judicial exception is not integrated into a practical application. In particular, the additional steps: the “receiving” step mounts to data gathering which is considered to be insignificant extra-solution activity (see MPEP 2106.05(g)). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea, thus fail to integrate the abstract idea into a practical application. See MPEP 2106.05(g).
Step 2B: Claim provides an Inventive Concept
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The insignificant extra-solution activities identified above, which include the data-gathering and the steps of “store each composite…….” and “generate search results……” are recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (see MPEP 2106.05(d)(II)). For these reasons, there is no inventive concept in the claim, and thus it is ineligible.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using one or more processors to detect the generate” steps amount 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.
The claim as a whole, does not amount to significantly more than the abstract idea itself. This is because the claim does not affect an improvement to the functioning of a computer itself; and the claim does not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, claim 1 is directed to an abstract idea.
As per claim 2, the claim recites “the at least one processing unit to execute the
processor-executable program code to cause the system to: receive a second search query including second search terms; determine a second group code of the plurality of group codes based on the second
search terms and the stored composite embeddings; and generate second search results based on the second search query and the second group code”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 3, the claim recites “wherein determination of a group code of the plurality
of group codes based on the search terms and the stored composite embeddings comprises:
application of an embedding generator to each of the search terms to generate search term embeddings; and generation of a search query composite embedding based on the search term
embeddings and a composition algorithm, wherein determination of a second group code of the plurality of group codes based on the second search terms and the stored composite embeddings comprises:
application of the embedding generator to each of the second search terms to generate second search term embeddings; and generation of a second search query composite embedding based on the search
second term embeddings and the composition algorithm”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 4, the claim recites “wherein the composite embeddings associated with each of the
plurality of group codes are generated using the embedding generator and the composition algorithm”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 5, the claim recites “wherein determination of a group code of the plurality
of group codes based on the search terms and the stored composite embeddings comprises: application of an embedding generator to each of the search terms to generate search term embeddings; and
generation of a search query composite embedding based on the search term embeddings and a composition algorithm, wherein the composite embeddings associated with each of the plurality of group codes are generated using the embedding generator and the composition algorithm”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 6, the claim recites “the at least one processing unit to execute the
processor-executable program code to cause the system to: receive a second plurality of item descriptions, each of the second plurality of item descriptions associated with a respective hierarchical code which includes a plurality of group codes; extract a second respective plurality of phrases from each of the second plurality of item descriptions; determine a second phrase embedding for each of the second respective plurality of phrases extracted from each of the second plurality of item descriptions;
for each of the second plurality of item descriptions, assign each second phrase embedding determined for each of the second respective plurality of phrases extracted from the item description to each of the plurality group codes included in the hierarchical code associated with the item description; generate a second composite embedding for each of the plurality of group codes based on the second phrase embeddings assigned to the group code; and store each second composite embedding in association with the group code for which the second composite embedding was generated”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 7, the claim recites “the at least one processing unit to execute the
processor-executable program code to cause the system to: receive a second search query including second search terms; determine a second group code of the plurality of group codes based on the second
search terms and the stored composite embeddings; and generate second search results based on the second search query and the second group code”. The judicial exception is not integrated into a practical application. In particular, this additional limitation amounts to no more than mere instructions to exception to perform an existing process on a generic computer (MPEP 2106.05(f)). Mere instructions to apply an exception using a generic computer do not amount to significantly more.
As per claim 8 the claim recites “A method comprising:
receiving a plurality of item descriptions, cach of the plurality of item descriptions
associated with a respective hierarchical code which includes a plurality of group codes;
extracting a respective plurality of phrases from each item description;
determining a phrase embedding for each of the respective plurality of phrases
extracted from each item description;
for each item description, assigning each phrase embedding determined for each
of the respective plurality of phrases extracted from the item description to each of the
plurality group codes included in the hierarchical code associated with the item
description;
generating a composite embedding for each of the plurality of group codes based
on the phrase embeddings assigned to the group code;
storing each composite embedding in association with the group code for which
the composite embedding was generated;
receiving a search query including search terms;
determining a group code of the plurality of group codes based on the search
terms and the stored composite embeddings; and
generating search results based on the search query and the group code”.
Step 1: Statutory Category
Claim 8 discloses a method which is a process within the meaning of the section.
Claim 8 recites the same limitations as claim 1 and therefore is rejected under the same premise as claim 1.
As per claim 9, the claim is rejected under the same premise as claim 2.
As per claim 10, the claim is rejected under the same premise as claim 3.
As per claim 11, the claim is rejected under the same premise as claim 4.
As per claim 12, the claim is rejected under the same premise as claim 5.
As per claim 13, the claim is rejected under the same premise as claim 6.
As per claim 14, the claim is rejected under the same premise as claim 7.
As per claim 15 the claim recites “One or more non-transitory media storing program code
executable by at least one processing unit of a computing system to cause the computing system to:
receive a plurality of item descriptions, each of the plurality of item descriptions
associated with a respective hierarchical code which includes a plurality of group codes;
extract a respective plurality of phrases from each item description;
determine a phrase embedding for each of the respective plurality of phrases
extracted from each item description;
for each item description, assign each phrase embedding determined for each of
the respective plurality of phrases extracted from the item description to each of the
plurality group codes included in the hierarchical code associated with the item
description;
generate a composite embedding for each of the plurality of group codes based on
the phrase embeddings assigned to the group code;
store each composite embedding in association with the group code for which the
composite embedding was generated;
receive a search query including search terms;
determine a group code of the plurality of group codes based on the search terms
and the stored composite embeddings; and
generate search results based on the search query and the group code”.
Step 1: Statutory Category
Claim 15 discloses a CRM which is a manufacture within the meaning of the section.
Claim 15 recites the same limitations as claim 1 and therefore is rejected under the same premise as claim 1.
As per claim 16, the claim is rejected under the same premise as claim 2.
As per claim 17, the claim is rejected under the same premise as claim 3.
As per claim 18, the claim is rejected under the same premise as claim 4.
As per claim 19, the claim is rejected under the same premise as claim 5.
As per claim 20, the claim is rejected under the same premise as claim 6.
Allowable Subject Matter
8. Claims 1-20 would be allowable if rewritten or amended to overcome the rejections as set forth in this Office action.
Conclusion
9. The prior art made of record, listed on PTO 892 provided to Applicant is considered to have relevancy to the claimed invention. Applicant should review each identified reference carefully before responding to this office action to properly advance the case in light of the prior art.
Contact Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM T NGUYEN whose telephone number is (571)270-1757. The examiner can normally be reached on Mon-Thurs 6-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the
examiner’s supervisor, Kavita Stanley can be reached on (571)272-8352. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Jan.19, 2026
/KIM T NGUYEN/Primary Examiner, Art Unit 2153