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 .
Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 1 and 11 recite “pending publication of a plurality of research papers” and “at least one pending publication of a research paper”. It is unclear if this reference to at least one future pending publication is intended to be a subset of pending publication of a plurality of research papers or is intended to create a second group. It is also unclear what define “pending publication” generally, as research is regularly submitted for publication and not accepted, and the pending status of any information in inherently indefinite as it depends on events that have not occurred, and amount to mere intent in a human mind rather than anything tangible or identifiable. Appropriate correction is required.
Claims 1 and 11 recite “future research publications” and “at least one future research publication”. It is unclear if this reference to at least one future research publication is intended to be a subset of future research publications or is intended to create a second group. It is also unclear what define “future research publications” generally, as research is regularly submitted for publication and not accepted, and the future status of any information in inherently indefinite as it depends on events that have not occurred. For example, patent applications are often based on subject matter that has not been disclosed to the public. Publication may depend on the selection of non-publication requests or granting of a patent, which is an event that is not guaranteed to occur. Claims 3, 5, 13 and 15 further recite “the at least one future publication”. It is understood that this phrase is likely to refer to the data used to generate a disclosure form, but may also refer to other information analyzed in the independent claims from which claims 3, 5, 13 and 15 depend. Appropriate correction is required.
Claims 4 and 14 recite “the information of granted patent publications”. There is insufficient antecedent basis for this limitation in the claims. Appropriate correction is required.
Claims 2-10 and 12-20 are rejected for incorporating at least the issues of the claims from which they depend.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Representative claim 1 recites “obtaining information corresponding to pending publication of a plurality of research papers; obtaining information of filed patent-related publications, wherein at least a portion of subject matter of the patent-related publications corresponds to subject matter of at least one pending publication of a research paper; … analyzing, …, information corresponding to future research publications; and generating, automatically and …, a disclosure form corresponding to at least one future research publication”. Therefore, the claim as a whole is directed to “Invention Disclosure Practices”, which is an abstract idea because it is a method of organizing human activity, including commercial or legal interactions (including agreements in the form of contracts; legal obligations; and business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and may also be considered a mental process. “Invention Disclosure Practices” is considered to be is a method of organizing human activity because the process of obtaining invention disclosures or mining for patentable ideas from inventors notebooks is a human process long performed by attorneys and technical advisors in technology transfer departments of colleges and universities, by in house counsel of corporations, and by patent attorneys. The claims steps are directed to such human processes, which may also be performed mentally by appropriate personal. As such, claim 1 is directed to an abstract idea.
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the following additional element(s): training a machine-learning model based on the information corresponding to pending publication of a plurality of research papers and the information of filed patent-related publications; a machine learning engine based on the trained model for analyzing data and generating data. Claim 11 further recites a processor; non-transitory memory storing instructions. These additional elements individually or in combination do not integrate the exception into a practical application. That is, the recitations of additional elements amount merely reciting the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). The recited additional elements do not address any technical problem or provide any technical solution. Rather, the additional elements amount to high level recitations of off the shelf technology. Such recitations do no more than generally link the use of a judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Accordingly, these 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. Claim 1 is directed to an abstract idea.
Claim 1 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 elements, individually and in combination, are merely being used to apply the abstract idea to a technological environment. As noted above, the recited additional elements do not address any technical problem or provide any technical solution. Rather, the additional elements amount to high level recitations of off the shelf technology, and can not amount to significantly more. Accordingly, claim 1 is ineligible.
Claims 11 recite substantially similar features to those recited in representative claim 1 and are ineligible based on substantially the same reasons.
Dependent claims 2-10 and 12-20 merely further limit the abstract idea and are thereby considered to be ineligible.
Dependent claims 2 and 12further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of triggering, based on the generation of the disclosure form, filing of a patent application, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 2 and 12 are also non-statutory subject matter.
Dependent claims 3 and 13 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of generating, automatically and …, a presentation and/or an agreement document corresponding to at least one future research publication, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 3 and 13 are also non-statutory subject matter.
Dependent claims 4 and 14 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of training based on existing publications of a second plurality of research papers and the information of granted patent publications, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 4 and 14 are also non-statutory subject matter.
Dependent claims 5 and 15 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of linking a first topic of the at least one future publication to a second topic of a patent application; and generating, based on a link between the first topic and the second topic, a key word link between a first organization associated with the at least one future publication to a second organization associated with the patent application, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 5 and 15 are also non-statutory subject matter.
Dependent claims 6 and 16 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of generating, based on the key word link, a report comprising a graphical representation of potential relationships between the first organization and the second organization, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 6 and 16 are also non-statutory subject matter.
Dependent claims 7 and 17 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of generating, automatically, patent application text based on an identification of a patentable concept …, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 7 and 17 are also non-statutory subject matter.
Dependent claims 8 and 18 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of filing, automatically and via an electronic interface of one or more patent offices, the patent application with automatically generated filing papers, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 8 and 18 are also non-statutory subject matter.
Dependent claims 9 and 19 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of automatically generating filing papers based on identification of the patentable concept and communicating the filing papers for execution via an electronic signature service, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 9 and 19 are also non-statutory subject matter.
Dependent claims 10 and 20 further limit the abstract idea of “Invention Disclosure Practices” by introducing the element of the patent application comprises a provisional patent application, which does not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of the abstract idea to a particular technological environment. Therefore, dependent claims 10 and 20 are also non-statutory subject matter.
Dependent claims 2-10 and 12-20 also do not integrated into a practical application. The dependent claims recite new additional elements other than further uses of generically recited machine learning engine and certain steps being performed automatically. These additional elements merely generally link the abstract idea to a particular technological environment or field of use. MPEP 2106.04(d)(I) indicates that generally linking an abstract idea to a particular technological environment or field of use cannot provide a practical application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. This has been re-evaluated under the “significantly more” analysis and has also been found insufficient to provide significantly more. MPEP 2106.05(A) indicates that generally linking an abstract idea to a particular technological environment or field of use cannot provide significantly more. Accordingly, dependent claims 2-10 and 12-20 are also ineligible.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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.
Claims 1-9 and 11-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 20220051358 to Ma et al.
With regards to claims 1 and 11, Ma et al. teaches:
a processor; non-transitory memory storing instructions that cause, when executed by the processor, the computing device to (paragraphs [0046]-[0066])
obtaining information corresponding to pending publication of a plurality of research papers (paragraph [0084], “In preferred embodiments, the system 100 may enable one or more functions associated with a directed idea graph which may include: creating an idea graph root node, adding the genesis invention disclosure and establishing the project; making a change or update to an idea graph; validating that an idea graph, or some component of it, is a valid branch of that tree and has not been modified; and forking or merging branches of the tree. The idea graph uses local and remote repositories that can be synchronized and allows for requests for synchronization and approval.”);
obtaining information of filed patent-related publications, wherein at least a portion of subject matter of the patent-related publications corresponds to subject matter of at least one pending publication of a research paper (paragraph [0122], “This approach requires developing rules, along with developing machine learning models, and then using a weighted probability distribution ranking-based approach to pick the right candidates. The system 100 also includes functionality that will upload a large number of patents, scripts, song, or ideas, enable users 101 to analyze existing libraries of patents, including lapsed patents, to identify areas where possible current or past infringement may occur. This may be accomplished by cross-referencing the patent libraries with data obtained from a variety of public databases, including and without limitation patent databases, business databases, product literature, technical papers, media announcements, and so forth.”; paragraph [0123], “Some specific functions provided by the automatic ontology induction system 500 may include: informing search for content or users 101 within an innovation eco-system; and facilitating intelligent, fine resolution entitlement capability to ensure that confidential information is not divulged inappropriately in an innovation platform.”; paragraph [0185], “In further embodiments, the system 100 may be configured to provide one or more functions which may include: online creation of invention disclosures, witnessing, archiving and secure sharing of invention disclosures between technology developers and patent counsel;”);
training a machine-learning model based on the information corresponding to pending publication of a plurality of research papers and the information of filed patent-related publications (paragraph [0175], “In further embodiments, the system 100 may include an idea similarity analysis engine that detects similar ideas using deep learning and uses a network of trusted “AI trainers”, who are compensated by the system in exchange for teaching the system how to differentiate between ideas.”);
analyzing, by a machine learning engine based on the trained model, information corresponding to future research publications (paragraph [0122], “The system 100 also includes functionality that will upload a large number of patents, scripts, song, or ideas, enable users 101 to analyze existing libraries of patents, including lapsed patents, to identify areas where possible current or past infringement may occur. This may be accomplished by cross-referencing the patent libraries with data obtained from a variety of public databases, including and without limitation patent databases, business databases, product literature, technical papers, media announcements, and so forth.”); and
generating, automatically and by the machine learning engine, a disclosure form corresponding to at least one future research publication (paragraph [0185], “automated conversion of invention disclosures into patent applications and automated electronic filing of such applications with patent offices; facilitating the electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless and with automated assurances of delivery and timely response;”).
With regards to claims 2 and 12, Ma et al. teaches: triggering, based on the generation of the disclosure form, filing of a patent application (paragraph [0185], “In further embodiments, the system 100 may be configured to provide one or more functions which may include: online creation of invention disclosures, witnessing, archiving and secure sharing of invention disclosures between technology developers and patent counsel; automated conversion of invention disclosures into patent applications and automated electronic filing of such applications with patent offices; facilitating the electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless and with automated assurances of delivery and timely response;”).
With regards to claims 3 and 13, Ma et al. teaches: generating, automatically and by the machine learning engine, a presentation and/or an agreement document corresponding to at least one future research publication (paragraph [0185], “In further embodiments, the system 100 may be configured to provide one or more functions which may include: online creation of invention disclosures, witnessing, archiving and secure sharing of invention disclosures between technology developers and patent counsel; automated conversion of invention disclosures into patent applications and automated electronic filing of such applications with patent offices; facilitating the electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless and with automated assurances of delivery and timely response;”, where a patent application may be a presentation and/or an agreement document).
With regards to claims 4 and 14, Ma et al. teaches: training based on existing publications of a second plurality of research papers and the information of granted patent publications (paragraph [0122], “The system 100 also includes functionality that will upload a large number of patents, scripts, song, or ideas, enable users 101 to analyze existing libraries of patents, including lapsed patents, to identify areas where possible current or past infringement may occur. This may be accomplished by cross-referencing the patent libraries with data obtained from a variety of public databases, including and without limitation patent databases, business databases, product literature, technical papers, media announcements, and so forth.”).
With regards to claims 5 and 15, Ma et al. teaches:
linking a first topic of the at least one future publication to a second topic of a patent application (paragraph [0181], “The system 100 may monitor many factors about the context of the data capture, including who is in a workgroup, what is the stage of the ideation work, the absence or inclusion of certain key words or phrases in the content developed, the overall velocity of collaboration as evidenced in the growth of the underlying idea graph, and other factors. Using this, the system 100 can highlight data and content that is more valuable in defending the intellectual property provenance.”); and
generating, based on a link between the first topic and the second topic, a key word link between a first organization associated with the at least one future publication to a second organization associated with the patent application (paragraph [0181], “The system 100 may monitor many factors about the context of the data capture, including who is in a workgroup, what is the stage of the ideation work, the absence or inclusion of certain key words or phrases in the content developed, the overall velocity of collaboration as evidenced in the growth of the underlying idea graph, and other factors. Using this, the system 100 can highlight data and content that is more valuable in defending the intellectual property provenance.”; paragraph [0214], “In further alternative embodiments, the system 100 may provide for improving the ability of users 101 to track and detect key intellectual property developments more effectively, including, without limitation: enabling ministries of commerce in nations to track the development of new technologies within their nations; enabling intellectual property managers in companies to track the development of new technologies; and enabling business leaders to identify emerging threats.”).
With regards to claims 6 and 16, Ma et al. teaches: generating, based on the key word link, a report comprising a graphical representation of potential relationships between the first organization and the second organization (paragraph [0075], “Referring also to FIGS. 13 and 14, in some embodiments, the system 100 may comprise intellectual property descriptions stored in an IP Ledger blockchain database 109 and the system 100 may comprise a Merkle directed graph 120, optionally cyclic and/or acyclic, to capture the evolution of an idea over time and so multiple parties can access the idea, providing an official time stamped global system of record (SOR) for ideas. This enables the tracking of the entire lifecycle of an idea and enables greater collaboration between multiple parties. … A tag 124 may comprise a keyword or term assigned to a piece of information, also known as metadata, that helps describe an item and allows it to be found again by browsing or searching. Preferably, a tag 124 may mark a specific point in history as being important. An idea 125 may be defined to be a plan, a suggestion, or a possible course of action to develop a product, service, process or organizational model. An IP Policy Server 3300 may comprise a network application that manages the secure discovery, selection, collaboration, authentication and automation of legal agreements to protect, manage and license intellectual property.”).
With regards to claims 7 and 17, Ma et al. teaches: generating, automatically, patent application text based on an identification of a patentable concept by the machine learning engine (paragraph [0185], “automated conversion of invention disclosures into patent applications and automated electronic filing of such applications with patent offices; facilitating the electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless and with automated assurances of delivery and timely response;”).
With regards to claims 8 and 18, Ma et al. teaches: filing, automatically and via an electronic interface of one or more patent offices, the patent application with automatically generated filing papers (paragraph [0110], “Some specific functions provided by the system 100 may include: online creation of invention disclosures, witnessing, archiving and secure sharing of invention disclosures between technology developers and patent counsel; integration of patent claim trees and patent-trademark relationship trees within the data structure of the intellectual property distributed ledger system; automated conversion of invention disclosures into patent applications and automated electronic filing of such applications with patent offices; electronic filing and prosecution of patent applications in patent and offices worldwide, allowing all correspondence to and from patent offices to be paperless and with automated assurances of delivery and timely response; automated docketing by participating patent offices in a standardized database accessible to all authorized participants, electronic notification of due dates and electronic payment of annuity fees; …”).
With regards to claims 9 and 19, Ma et al. teaches automatically generating filing papers based on identification of the patentable concept and communicating the filing papers for execution via an electronic signature service (paragraph [0172], “Workflow examples include the routing of invention disclosures to a working practitioner for drafting patent applications, circulation of draft patent applications to inventors and managers for review and comment, circulation of Patent Office forms to inventors and managers for signature, notification of practitioners of the receipt of Patent Office actions and papers, and routing of documents to service providers (e.g., informal drawings to a draftsperson for creation of formal drawings) as needed.”).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20220051358 to Ma et al. as applied to claims 1-9 and 11-19 above, and further in view of U.S. Patent Application Publication No. 20140365254 to Giles.
With regards to claims 10 and 20, Ma et al. teaches: a system for filing patent applications, but fails to explicitly teach filing provisional applications. However Giles teaches the patent application comprises a provisional patent application (Claims 1 and 2, paragraph [0043], “Fears are reduced by having a standardized set of agreements or contracts that address but are not limited to: confidentiality (non-disclosure); collaboration, intellectual property ownership and development, compensation, manufacturing and licensing. Costs are reduced by utilizing the lean invention methodology processes by identifying some or all of the steps for adequate; development, design, creation of intellectual property, marketing, prototyping/manufacturing, crowd funding, and market feedback that can be secured for minimal costs (see FIG. 2).”; paragraph [0044], “Risks are reduced by providing or providing access to some or all of the tools and information to secure minimal viable intellectual property which may include but not limited to Provisional Patent Applications, Copyrights, trade secrets, domain names, social media names/handles, common law trademarks, and email addresses for free or at a minimal cost.”).
This part of Giles is applicable to the system of Ma et al. as they both share characteristics and capabilities, namely, they are directed to patent application development services. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Ma et al. to include the provisional patent application as taught by Ma et al. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Ma et al. in order to establish a priority date with reduced costs for preparation and filing (see 37 CFR 1.53(c) noting lack of claim requirement and fees).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication No. 20190279073 to Adibowo discusses a patent analysis system generates and updates a patentability model. The patentability model utilizes vectorized patent publication data and public corpus data to generate a function for predicting the likelihood of patent grant. The patentability model also considers patent grant statistics in generating the function. After generating the function, the patent analysis system may maintain and/or update the patentability model based on new publications and idea disclosures.
U.S. Patent Application Publication No. 20070226163 to Robles discusses a system for matching most worthy knowledge surplus with most worthy knowledge deficit. The rate of change of information in this system is defined as knowledge. The rate of change of knowledge in this system is defined as innovation. A method and system of conducting enterprise is specified where knowledge is formatted to behave like a financial instrument embodied in an Innovation Bank and enabled by computer technology. An Innovation Bank is comprised of multiple applications of a Unit Business Method, a Knowledge Inventory, and an open source Problem Solving Environment. Each component is of specific formulation providing for integration of knowledge family elements..
U.S. Patent Application Publication No. 20160232246 to Rau et al. discusses a tool for searching and evaluating relative commercial potential of an invention. A user may select any of the services such as search, draft, innovation evaluation, commercial potential evaluation and so on. A search tool automatically generates a key string based on user inputs, searches in associated databases, organizes search results and delivers to the user. The keywords are improved or modified automatically by the search tool so as to improve subsequent search results. The keywords are improved by considering parameters such as field of search, search history of the user and so on. Further, new keywords are added to a dictionary so as to improve search strings each time. Drafting tools may be used to draft patent applications in specific format. Further, a research commercialization evaluator is used to analyze commercial potential of an invention.
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/J.D.S./Examiner, Art Unit 3626
/JESSICA LEMIEUX/Supervisory Patent Examiner, Art Unit 3626