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.
Claims 1, 3-5, 11, and 13-15 are amended. No claims are cancelled or added.
Response to Arguments
Applicant's arguments with respect to Section 112 have been fully considered but they are not persuasive. Applicant has failed to address several of the rejection with amendment or argument. As such, the rejections are maintained.
Applicant's arguments with respect to Section 101 have been fully considered but they are not persuasive. Applicant fails to address the rejection as written. The rejection has been updated to address the amended claims, including the newly recited language addressed in the arguments. It is noted that the claims have been amended to recite additional uses of technology, but do not seem to address any improvements to technology being applied. Courts have held that “patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.” Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1216 (Fed. Cir. 2025). The claims do not recite an improvement to the functioning of a computer or technical field. Any purported improvement, e.g., “faster unstructured text storage and retrieval, more rapid corpus updates, and improved responses to user queries,” generally relates to the abstract idea, and does not improve a computer, technology, or a technical field. See McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (“We . . . look to whether the claims in these patents focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., 687 F.3d at 1278; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (explaining that “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”). As such, the rejection has been updated to address the amended claims, but the arguments are not persuasive.
Applicant’s arguments with respect to the Section 102 and 103 rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 “obtaining information corresponding to pending publication of a plurality of research papers”. This phrase is non-idiomatic and unclear form grammatical reasons. It is 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 “a/the future research publication”. It is 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, or personal whims of an author. Claims 3, 5, 13 and 15 further recite “at least one future research publication of the research papers to be submitted for publication” or “at least one of the research papers to be submitted for 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. The phrase “to be submitted for publication” also fails to identify any limits on that is being generated. That is, this phrase refers only to an intended action to be taken by another, but fails to limit what is being generated in any meaningful or decipherable manner. Appropriate correction is required.
Claims 1 and 11 recite “the machine-learning model uses natural language processing to identify key words and key-value pairs from the plurality of research papers and the filed patent-related publications”. However, these key words and key-value pairs are identified and never used again. It is unclear is there is any purpose for the key words and key-value pairs or if an element is missing from the claim to make the calculation in some way relevant. Appropriate correction is required.
Claims 1 and 11 recite “calculating a relation score corresponding to a likelihood that the research papers to be submitted for publication and the filed patent-related publications cover related subject matter, wherein the relation score is calculated using a weighting function”. However, this score is never used. It is just a mathematical calculation made for no purpose. It is unclear is there is any purpose for this calculation or if an element is missing from the claim to make the calculation in some way relevant. 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 research paper of the plurality of research papers; … identify key words and key-value pairs from the plurality of research papers and the filed patent-related publications; analyzing, …, information corresponding to future research publication; calculating a relation score corresponding to a likelihood that the research papers to be submitted for publication and the filed patent-related publications cover related subject matter, wherein the relation score is calculated using a weighting function; and generating, …, a disclosure form corresponding to the 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 the plurality of research papers and the information of the filed patent-related publications, wherein the machine-learning model uses natural language processing to identify key words and key-value pairs from the plurality of research papers and the filed patent-related publications; analyzing, by a machine learning engine based on the trained machine-learning model, information corresponding to future research publication; and generating, automatically and by the machine learning engine, a disclosure form corresponding to the future research publication. 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 as commercially available LLMs. 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 12 further 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 of the research papers to be submitted for 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 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 of the research papers to be submitted for 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 of the research papers to be submitted for 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 § 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 wou1ld 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 1-9 and 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 20220051358 to Ma et al. in view of U.S. Patent Application Publication No. 20210342552 to Mishra 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 a plurality of research papers submitted for publication (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 research paper of the plurality of research papers submitted for publication (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 the plurality of research papers submitted for publication and the information of the 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 machine-learning model, information corresponding to research papers to be submitted for publication (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 the research papers to be submitted for 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;”), but fails to teach identify key words and key-value pairs. However, Mishra et al.
train a machine-learning model based on the information …, wherein the machine-learning model uses natural language processing to identify key words and key-value pairs …. (paragraph [0031], “A present invention embodiment uses natural language generation (NLG) to summarize data in natural language text, where input may be values in tables, lists of keywords, key-value pairs, knowledge graph entries, etc. The present invention embodiment transforms input text according to an input template. The present invention embodiment does not require explicit supervision (e.g., training data can be automatically generated, etc.), and may utilize easily implementable or available natural language processing (NLP) systems as a source for generating training data. The present invention embodiment may detect part-of-speech (POS) tags of keywords accurately using a context oblivious approach, and may be used to generate a sentence in one language from keywords in another language by using universal POS tags.”);
calculate a relation score corresponding to a likelihood that the research papers to be submitted for publication and the filed patent-related publications cover related subject matter, wherein the relation score is calculated using a weighting function (paragraph [0080], “The probability terms, λ, from tag overlap module 352 for the template tags are applied as weights to the attended context vectors for the keywords, ct (represented by a weighted combination of the transformed vectors for the keywords), while complement probability values (e.g., 1−λ) are applied to the context for the template tags (represented by the encoded template vectors). The weighted contexts for the keywords and template tags are combined by combiners 355, and provided to decoding module 358. When the probability term, λ, indicates a likely match between a template tag and one of the keyword tags, the attended context of the keywords has greater influence over decoding module 358 for selection of one of the keywords for the template tag (as opposed to another word in the word vocabulary derived from the training data). Moreover, when the probability term, λ, indicates an unlikely match between a template tag and one of the keyword tags, the context for the template tag has greater influence over decoding module 358 for selection of a vocabulary word for the template tag (as opposed to one of the keywords).”; paragraph [0125], “F1 scores were computed for keyword based training data and augmented keyword based training data for training and validation phases. An F1 score considers both precision and recall. The F1 scores for training and validation phases for the augmented keyword based training data indicated an improvement relative to the keyword based training data.”);
This part of Mishra et al. is applicable to the system of Ma et al. as they both share characteristics and capabilities, namely, they are directed to language processing systems. 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 patent document analysis system of Ma et al. to include the keyword and key pair training as taught by Mishra 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 reducing processing for the decoding and enabling a language model of a decoder to have a strong influence on a generation process (see paragraph [0009] of Mishra et al.).
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 of the research papers to be submitted for 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 of the research papers to be submitted for 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 of the research papers to be submitted for 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.”).
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. in view of U.S. Patent Application Publication No. 20210342552 to Mishra 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 modified 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 modified Ma et al. to include the provisional patent application as taught by Giles. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify modified 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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/J.D.S./Examiner, Art Unit 3626
/SANGEETA BAHL/ Primary Examiner, Art Unit 3626
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