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 .
DETAILED ACTION
Status of Claims
This First Office action is in reply to the application filed on 26 March 2025.
Claims 1-14 are currently pending and have been examined. The Information Disclosure Statements filed 26 March 2025; 09 June 2025 been considered by the Examiner. Signed copies are enclosed with this Office Action.
Inventorship
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the Examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicants are advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the Examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claim Objections
Claims 1-14 are objected to for the recitation of “AI” which should be defined or spelled out before using its abbreviation form. Appropriate correction is required.
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 1-14 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) because the claimed invention is directed to a judicial exception (i.e., a law of nature, natural phenomenon, or an abstract idea) without significantly more. The claims as a whole recite certain grouping of an abstract idea and are analyzed in the following step process:
Step 1: Claims 1-12 and 14 are each focused to a statutory category of invention, namely “system; non-transitory information storage medium” sets. However “method” Claim 13 does not have any computer architecture components recited in the claim for statutory category of invention support. Despite this failure to pass Step 1 the Examiner proceeds to the next steps of the analysis.
Step 2A: Prong One: Claims 1-14 recite limitations that set forth the abstract ideas, namely, the claims as a whole recite the claimed invention as directed to an abstract idea without significantly more. This describes the mere collection, receipt, and transmission of information. Gathering and organizing data based on user input is categorized as an abstract idea (specifically, a fundamental economic or conventional business practice). Similarly, receiving user input is a data-gathering step. It does not impose specific physical limitations and constitutes an abstract idea. The claims recite steps for:
“acquire registration data registered in the work support system;
acquire, based on input of the user, user input information relating to an electronic document to be generated;
execute generation-related processing relating to generation of the electronic document, based on the registration data, the user input information, and an AI;
and provide the electronic document to the user”
As detailed in the MPEP 2106 and commensurate to the two-part subject matter eligibility framework decision in the Federal court decision in Alice Corp. Pty. Ltd. V. CLS Bank International et al., (Alice), 2019 revised patent subject matter eligibility guidance (2019 PEG) and the October 2019 Update: Subject Matter Eligibility (“October 2019 Update), and the new “July 2024 Guidance Update on Patent Subject Matter Eligibility Examples, including on Artificial Intelligence”, the 2019 PEG explains that the abstract idea exception includes the following groupings of subject matter. The 35 U.S.C. 101 Step 2A, Prong One analysis focuses on whether a claim recites a judicial exception by evaluating if it falls into one of three specific groupings: mathematical concepts, mental processes, or certain methods of organizing human activity. Based on the provided steps, the analysis for Step 2A Prong One is as follows:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations. Mathematical relationships, formulas, or calculations that drive the AI's generation processing.
Certain methods of organizing human activity –managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); fundamental Economic or Conventional Business Practices. Acquiring and using preexisting business data (registration data) from a work support system to form a new document.
Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion). This step is the "mental process" or mathematical algorithm core. Executing a process (even utilizing AI) to analyze inputs, generate text, and output a document essentially describes a mental operation or a mathematical calculation, falling directly under the abstract idea exception. Concepts performed solely in the human mind or emulated via computer logic (e.g., assessing registration data against user input to draft or generate text).
See MPEP § 2106.04(a) III C. Hence, the claims are ineligible under Step 2A Prong one. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. “method” Claim 13 does not have any computer architecture components recited in the claim for statutory category of invention support.
Prong Two: Claims 1-14: With regard to this step of the analysis (as explained in MPEP § 2106.04(d)), the judicial exception is not integrated into a practical application. Claims 1-12, 14 recite additional elements directed to “system; non-transitory information storage medium” (e.g., see Applicants’ published Specification ¶’s 17-22). Therefore, the claims contain computer components that are cited at a high level of generality and are merely invoked as a tool to perform the abstract idea. Simply implementing an abstract idea on a computer is not a practical application of the abstract idea. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible. “method” Claim 13 does not have any computer architecture components recited in the claim for statutory category of invention support. See MPEP § 2106.05(f) (h).
Step 2B: As explained in MPEP § 2106.05, Claims 1-14 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea nor recites additional elements that integrate the judicial exception into a practical application. The additional elements of “system; non-transitory information storage medium”, etc. are generically-recited computer-related elements that amount to a mere instruction to “apply it” (the abstract idea) on the computer-related elements (see MPEP § 2106.05 (f) – Mere Instructions to Apply an Exception). These additional elements in the claims are recited at a high level of generality and are merely limiting the field of use of the judicial exception (see MPEP §2106.05 (h) – Field of Use and Technological Environment). There is no indication that the combination of elements improves the function of a computer or improves any other technology. Furthermore, the dependent claims are merely directed to the particulars of the abstract idea and likewise do not add significantly more to the above-identified judicial exception. The limitations of the claims do not transform the abstract idea that they recite into patent-eligible subject matter because the claims simply instruct the practitioner to implement the abstract idea using generally-recited computer components, and furthermore do not amount to an improvement to a computer or any other technology, and thus are ineligible. “method” Claim 13 does not have any computer architecture components recited in the claim for statutory category of invention support.
The Examiner interprets that the steps of the claimed invention both individually and as an ordered combination result in Mere Instructions to Apply a Judicial Exception (see MPEP §2106.05 (f)). These claims recite only the idea of a solution or outcome with no restriction on how the result is accomplished and no description of the mechanism used for accomplishing the result. Here, the claims utilize a computer or other machinery (e.g., see Applicants’ published Specification ¶’s 17-22) regarding using existing computer processors as well as program products comprising machine-readable media for carrying or having machine-executable instructions or data structures stored. “work support server 30” in its ordinary capacity for performing tasks (e.g., to receive, analyze, transmit and display data) and/or use computer components after the fact to an abstract idea (e.g., a fundamental economic practice and certain methods of organization human activities) and does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016)). Software implementations are accomplished with standard programming techniques with logic to perform connection steps, processing steps, comparison steps and decisions steps. These claims are directed to being a commonplace business method being applied on a general-purpose computer (see Alice Corp. Pty, Ltd. V. CLS Bank Int’l, 134 S. Ct. 2347, 1357, 110 USPQ2d 1976, 1983 (2014)); Versata Dev. Group, Inc., v. SAP Am., Inc., 793 D.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)) and require the use of software such as via a server to tailor information and provide it to the user on a generic computer. Based on all these, Examiner finds that when viewed either individually or in combination, these additional claim element(s) do not provide meaningful limitation(s) that raise to the high standards of eligibility to transform the abstract idea(s) into a patent eligible application of the abstract idea(s) such that the claim(s) amounts to significantly more than the abstract idea(s) itself. Accordingly, Claims 1-14 are rejected under 35 U.S.C. §101 because the claimed invention is directed to a judicial exception (i.e. abstract idea exception) without significantly more.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Broadly recited Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kanner et al. (Kanner) (US 2020/0143258).
With regard to Claims 1, 13, 14, Kanner teaches a work support system/method/non-transitory information storage medium, which is configured to support work of a user (provide a platform (server system) having a computer-implemented infrastructure, operated under user control, by which a use can provide, organize, categorize, manage, control, access, and disseminate personal information (digital and physical) within personal, private networks of family, friends, trusted advisors, etc. The personal information organized within the user-controlled infrastructure of these embodiments is comprehensive, including information related to a user's home, vehicles, healthcare, finances, etc. The infrastructure of these embodiments organizes such personal information into categories or collections) (see at least paragraphs 41-46, 54), the work support system comprising at least one processor configured to:
acquire registration data registered in the work support system (An “event” is something that can happen at a specific date or time. An event can be a one-time only event, or a recurring event. In embodiments of the present invention, an item of information may be associated with one or more events, which can be identified on parsing of the information. Examples of events include renewal dates associated with one or more received items of information, such as dates for renewing a prescription, or a driver's license, vehicle registration, or pet registration; also expiration dates, and dates and times for reminders) (see at least paragraphs 41-51);
acquire, based on input of the user, user input information relating to an electronic document (receiving a set of items of information from a computing device operated on behalf of the specific user, wherein receiving the set of items of information includes receiving information selected from the group consisting of (i) a digital file defining a set of images, (ii) a digital file defining a document, (iii) external account information of the specific user, (iv) textual information provided by manual input, (v) a digital file defining a video recording, (vi) a digital file defining an audio recording, (vii) digital data associated with communication across an AP) to be generated (A “contextual category” is a classification of a component of information that is obtained, in accordance with an embodiment of the present invention, after an item of information has been received by the server system, as derived information from an artificial intelligence engine that has processed the item of information. A contextual category is assigned to a component based on specific attributes of the component, and distinct components are permitted to be assigned distinct contextual categories that depend on attributes of the components, and each component has a set of contextual categories. The contextual categories are assigned in accordance with a taxonomy that provides a unifying context for similar components of information) (see at least paragraphs 4-8, 41-51);
execute generation-related processing relating to generation of the electronic document, based on the registration data, the user input information ( upon receiving a selection from the specific user relating to a specific account asset of the user, the computer processes include causing display, on a computing device of the specific user, of a set of representations of members selected from the group consisting of contextual categories and information types pertinent to the specific account asset of the user, wherein the display includes pertinent information currently associated with the specific account regardless whether added by the specific user or by any other person or originating elsewhere and shared with the specific user), and an AI (“Parsing” a received item of information includes extracting, from the received item of information, an information type and a set of data fields. Depending on the type of items of information, the method of extracting the information type and the data fields will vary. For instance, in embodiments of the present invention, for a set of images, optical character recognition (OCR) techniques are used to extract raw text information, which is then processed by an artificial intelligence engine to derive the information type and the data fields) (see at least paragraphs 4-8, 41-51);
and provide the electronic document to the user (upon receiving a selection from the specific user relating to a specific account asset of the user, the computer processes include causing display, on a computing device of the specific user, of a set of representations of members selected from the group consisting of contextual categories and information types pertinent to the specific account asset of the user, wherein the display includes pertinent information currently associated with the specific account regardless whether added by the specific user or by any other person or originating elsewhere and shared with the specific user) (see at least paragraphs 4-8, 41-51).
With regard to Claim 2, Kanner teaches: acquire setting information relating to a setting of the registration data (see at least paragraphs 4-8, 41-51);
execute the generation-related processing further based on the setting information (see at least paragraphs 4-8, 41-51).
With regard to Claim 3, Kanner teaches: acquire a template document relating to the electronic document, the template document being provided in advance (see at least paragraphs 4-8, 41-51, 85);
execute the generation-related processing further based on the template document (see at least paragraphs 4-8, 41-51).
With regard to Claim 4, Kanner teaches: acquire selected registration data, which is a piece of the registration data selected by the user, and related registration data, which is another piece of the registration data relating to the piece of registration data, from among a plurality of pieces of the registration data (see at least paragraphs 4-8, 41-51, 85);
execute the generation-related processing based on the selected registration data and the related registration data (see at least paragraphs 4-8, 41-51, 85).
With regard to Claim 5, Kanner teaches: acquire an already-generated electronic document generated by the generation-related processing executed in a past (see at least paragraphs 4-8, 41-51, 85);
execute the generation-related processing further based on the already-generated electronic document (see at least paragraphs 4-8, 41-51, 83-86).
With regard to Claim 6, Kanner teaches: acquire comment information relating to a comment associated with the registration data (see at least paragraphs 4-8, 41-51, 85);
execute the generation-related processing further based on the comment information (see at least paragraphs 4-8, 41-51, 83-86).
With regard to Claim 7, Kanner teaches: execute code generation processing for generating code relating to the generation of the electronic document as the generation-related processing (see at least paragraphs 4-8, 41-51, 83-86);
generate the electronic document based on the code generated by the code generation processing (see at least paragraphs 4-8, 41-51, 83-86).
With regard to Claim 8, Kanner teaches wherein the at least one processor is configured to provide the electronic document to the user by executing processing for displaying, on a user terminal of the user, a screen that allows the user to correct the electronic document based on a deployment result of the electronic document (see at least paragraph 51.
With regard to Claim 9, Kanner teaches:
acquire, based on input of the user, correction content information relating to correction content in the electronic document (see at least paragraph 66);
execute correction-related processing relating to generation of correction portion information relating to post-correction content of a correction portion corresponding to the correction content in the electronic document, based on the correction content information and the AI (see at least paragraphs 4-8, 41-51, 66, 83-86);
correct the electronic document by replacing the correction portion in the electronic document by the correction portion information (see at least paragraphs 4-8, 41-51, 83-86).
With regard to Claim 10, Kanner teaches wherein the at least one processor is configured to execute, when the electronic document has been generated, verification processing relating to verification of the electronic document (see at least paragraph 66).
With regard to Claim 11, Kanner teaches wherein the at least one processor is configured to execute, when the electronic document has been generated, work processing relating to the work in which the electronic document is used (see at least paragraphs 4-8, 41-51, 83-86).
With regard to Claim 12, Kanner teaches: acquire comment information relating to a comment on an already-generated electronic document generated by the generation-related processing executed in a past, the comment having been input by another user other than the user (see at least paragraphs 4-8, 41-51, 83-86);
execute the generation-related processing further based on the comment information (see at least paragraphs 4-8, 41-51, 83-86).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Smoak et al. (US 8843853)
Nelson et al. (US 2020/0092178)
Marovets (US 2013/0095864)
Patchet (EP 1645944 B1)
Chanthati, Sasibhushan Rao. "Second version on a centralized approach to reducing burnouts in the IT industry using work pattern monitoring using artificial intelligence using MongoDB atlas and python." (2021): 1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS L MANSFIELD whose telephone number is (571)270-1904. The examiner can normally be reached M-Thurs, alt. Fri. (9-6).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Munson can be reached at (571) 270-5396. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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THOMAS L. MANSFIELD
Examiner
Art Unit 3623
/THOMAS L MANSFIELD/Primary Examiner, Art Unit 3624
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