DETAILED ACTION
Status of Claims
Claims 1-17 are currently pending and have been examined in this application. This communication is the first action on the merits.
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 .
Claim Objections
Claims 4, 7, and 10-11 are objected to because of the following informalities:
Claims 4, 7, and 10-11: “wherein further comprising” should read “further comprising.”
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “input module,” “semantic analysis module,” “industry classification module,” “search module,” “database module,” “intellectual property information disclosure module,” “recommendation module,” “login module,” “content generation module,” “data input module,” “disclosure document generation unit,” “diagram generation unit,” and “claim content generation unit,” “order processing module,” “diagram learning unit,” “compiler unit,” “search document generation module,” “figure search unit,” “transformation unit,” “figure comparison unit,” “language determination module,” “translation module,” “case processing module,” “specification generation unit,” “application form generation unit,” “keyword extraction module,” “international conversion module,” “language judgment module,” and “content learning module.”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f).
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.
Claims 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
The claims are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claims must be in one sentence form only (Claims 11-12 are not in one sentence form).
Claims 1-3 recite the limitation "the processor of the electronic device." There is insufficient antecedent basis for "the processor" in the claims.
Claim 1 recites the limitation "uses the user interface of the electronic device." There is insufficient antecedent basis for "the user interface" in the claim.
Claim 1 recites the limitation "compare the data in the database module." There is insufficient antecedent basis for "the data" in the claim.
Claim 1 recites the limitation "transmit the data matched." There is insufficient antecedent basis for "the data" in the claim. It is unclear whether this is referring to “the data” in the limitation “compare the data in the database module,” or to different data.
Claim 1 recites the limitation "presents the information to the user." There is insufficient antecedent basis for "the information" in the claim.
Claim 1 recites the limitation "analyzes the types of intellectual property in the data." There is insufficient antecedent basis for "the types of intellectual property" in the claim.
Claim 1 recites the limitation "displays the recommended types of intellectual property to be applied." There is insufficient antecedent basis for "the recommended types of intellectual property" in the claim.
Claim 1 recites the limitation "user completes the login through a login module." There is insufficient antecedent basis for "the login" in the claim.
Claim 1 recites the limitation "presented in the information of the recommended patent type." There is insufficient antecedent basis for "the information" in the claim. It is unclear whether this is referring to the information previously presented in the claim, or to different information.
Claim 2 recites the limitation "entered by the user." There is insufficient antecedent basis for "the user" in the claim.
Claims 2-3 recite the limitation "recording the input language of the string information." There is insufficient antecedent basis for "the input language" in the claims.
Claim 2 recites the limitation "analyzes the industry category classification code for the semantic analysis results." There is insufficient antecedent basis for "the industry category classification code" in the claim.
Claim 2 recites the limitation "searches for the data." There is insufficient antecedent basis for "the data" in the claim.
Claim 2 recites the limitation "generates the recommended type of intellectual property to be applied according to the type of intellectual property in the data information." There is insufficient antecedent basis for "the recommended type of intellectual property to be applied" and "the type of intellectual property" in the claim.
Claims 2-3 recite the limitation "authenticate the identity." There is insufficient antecedent basis for "the identity" in the claims.
Claim 2 recites the limitation "generates the recommended patent type to be applied." There is insufficient antecedent basis for "the recommended patent type to be applied" in the claim.
Claim 3 recites “The An… system.” It is unclear whether the claim is intended to recite “An… system” or “The… system.” If the claim is intended to recite “The… system,” then there is insufficient antecedent basis for this limitation in the claim, as the claim does not recite dependency on a previous claim.
Claim 3 recites the limitation "login module that the user operates." There is insufficient antecedent basis for "the user" in the claim.
Claim 3 recites the limitation "updates the information in the case order." There is insufficient antecedent basis for "the information" in the claim.
Claim 3 recites the limitation "selects the first target country." There is insufficient antecedent basis for "the first target country" in the claim.
Claim 3 recites the limitation "receiving the descriptive text or graphics." There is insufficient antecedent basis for "the descriptive text or graphics" in the claim.
Claim 3 recites the limitation "analyzes the industry category classification code for the semantic analysis results." There is insufficient antecedent basis for "the industry category classification code" in the claim.
Claim 3 recites the limitation "learns the content and diagrams in the corresponding patent specifications." There is insufficient antecedent basis for "the content and diagrams" and "the corresponding patent specifications" in the claim.
Claim 3 recites the limitation "the patent diagram is generated." There is insufficient antecedent basis for "the patent diagram" in the claim.
Claim 4 recites the limitation "receiving the input figure." There is insufficient antecedent basis for "the input figure" in the claim.
Claim 4 recites the limitation "bring in the Vienna classification label." There is insufficient antecedent basis for "the Vienna classification label" in the claim.
Claim 5 recites the limitation " the official language." There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the language in the patent diagram." There is insufficient antecedent basis for "the language" in the claim.
Claim 7 recites the limitation "applies the formatted template." There is insufficient antecedent basis for "the formatted template" in the claim.
Claim 7 recites the limitation "generate the abstract content." There is insufficient antecedent basis for "the abstract content" in the claim.
Claim 7 recites the limitation " the field." There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "generate the application form." There is insufficient antecedent basis for "the application form" in the claim.
Claim 7 recites the limitation "generates the specification file." There is insufficient antecedent basis for "the specification file" in the claim.
Claim 9 recites the limitation "the figure comparison unit." There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the process of comparison." There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the similarity." There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "the machine learning algorithm." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the second target country." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the language judgment module." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the official language." There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the figure disclosure document." There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this is referring to the “patent disclosure document” or a different document.
Claim 11 recites the limitation "the format." There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the input language." There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "learns the content and diagrams in the patent disclosure documents." There is insufficient antecedent basis for "the content and diagrams" and "the patent disclosure documents" in the claim.
Claim 13 recites the limitation "the same as the official language of the first target country." There is insufficient antecedent basis for "the official language" in the claim.
Claim 14 recites the limitation "the application form." There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the language of the specification document." There is insufficient antecedent basis for "the language" and "the specification document" in the claim.
Claim 15 recites the limitation "the same as the official language of the second target country." There is insufficient antecedent basis for "the official language" in the claim.
Claim 15 recites the limitation "the format of the translated specification document." There is insufficient antecedent basis for "the format" in the claim.
Claim 16 recites the limitation "the figure input." There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the input figure." There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this is referring to “the figure input” of Claim 16, or to a different figure.
Claim 17 recites the limitation "the figure." There is insufficient antecedent basis for this limitation in the claim. It is unclear whether this is referring to “the figure input” of Claim 16, and/or “the input figure of Claim 17, to a different figure.
Claim 17 recites the limitation "the figures in the database module." There is insufficient antecedent basis for "the figures" in the claim.
Claim limitations “input module,” “semantic analysis module,” “industry classification module,” “search module,” “database module,” “intellectual property information disclosure module,” “recommendation module,” “login module,” “content generation module,” “data input module,” “disclosure document generation unit,” “diagram generation unit,” and “claim content generation unit,” “order processing module,” “diagram learning unit,” “compiler unit,” “search document generation module,” “figure search unit,” “transformation unit,” “figure comparison unit,” “language determination module,” “translation module,” “case processing module,” “specification generation unit,” “application form generation unit,” “keyword extraction module,” “international conversion module,” “language judgment module,” and “content learning module” invoke 35 U.S.C. 112(f). However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. It is unclear whether the various modules and units comprise software or hardware, and if they comprise hardware, the specification does not provide detail of the corresponding structure of the modules / units that perform the functions in the claim. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b).
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f);
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1 and 12-17 are directed to a process. Claims 2-11 are directed to a machine. As such, each claim is directed to a statutory category of invention.
Step 2A Prong 1
The examiner has identified independent Claim 1 as the claim that represents the claimed invention for analysis and is similar to independent Claims 2-3 and 12.
Independent Claim 1 recites the following abstract ideas: “A method for intelligent patent type recommendation and draft generation, wherein a user perform patent type recommendation and draft generation, comprising the following steps at least: (S 100) The user receive input text content; (S200) analysis on the text content; (S300) classify the text content by industry technology, and to search and compare the data and to transmit the data matched ; (S400) analyzes and statistically analyzes the data and presents the information to the user ; (S500) The data analyzed and statistically analyzed is also transmitted , which classifies and statistically analyzes the types of intellectual property in the data, and displays the recommended types of intellectual property to be applied in a sorted order; (5600) The user selects a patent type ; (5700) The user receive input technical description; (S800) The user completes the login to generate summary content and a simplified diagram; In step (S800) or thereafter, the following are further comprised: (S8001) analyze the generated summary content and simplified diagram, and to provide a recommended patent type to be applied; (S8002) further evaluates each patent type and generates a patent risk assessment report, which is presented in the information of the recommended patent type at the same time; (S8003) The user selects the patent type to be applied generate a patent disclosure document, claim content, and patent diagram, and to integrate them into a draft by incorporating a formatted template.”
The limitations, as drafted, are a process that, under its broadest reasonable interpretation, relates to legal interactions including agreements in the form of contracts or legal obligations (i.e., A method for intelligent patent type recommendation and draft generation, wherein a user perform patent type recommendation and draft generation, comprising the following steps at least: (S 100) The user… input text content; (S200) analysis on the text content; (S300) classify the text content by industry technology, and to search and compare the data, and to transmit the data matched; (S400) analyzes and statistically analyzes the data and presents the information to the user; (S500) The data analyzed and statistically analyzed is also transmitted, which classifies and statistically analyzes the types of intellectual property in the data, and displays the recommended types of intellectual property to be applied in a sorted order; (5600) The user selects a patent type; (5700) The user… input technical description; (S800) The user completes the login to generate summary content and a simplified diagram; In step (S800) or thereafter, the following are further comprised: (S8001) analyze the generated summary content and simplified diagram, and to provide a recommended patent type to be applied; (S8002) further evaluates each patent type and generates a patent risk assessment report, which is presented in the information of the recommended patent type at the same time; (S8003) The user selects the patent type to be applied, generate a patent disclosure document, claim content, and patent diagram, and to integrate them into a draft by incorporating a formatted template), but for the recitation of generic computer components (i.e., an electronic device, a processor, a server, a network interface controller, an application program, a user interface, and various modules). If a claim limitation, under its broadest reasonable interpretation, relates to legal interactions including agreements in the form of contracts or legal obligations, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. Limitations that are not indicative of integration into a practical application include: (1) Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP 2106.05(f)), (2) Adding insignificant extra-solution activity to the judicial exception (MPEP 2106.05(g)), (3) Generally linking the use of the judicial exception to a particular technological environment or field of use (MPEP 2106.05(h)). In particular, the claim recites the additional elements of an electronic device, a processor, a server, a network interface controller, an application program, a user interface, and various modules (in addition to the natural language database of Claim 2, the various units of Claims 2 and 3, and the large language model of Claim 3). The computer hardware is recited at a high level of generality (i.e., generic interface for receiving and displaying information, generic computers receiving, processing, generating, and transmitting information, and generic ML model learning information) such that it amounts to no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application, since they do not involve improvements to the functioning of a computer or to any other technology or technical field (MPEP 2106.05(a)), they do not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), they do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and they do not apply or use the abstract idea in some other meaningful way beyond generally linking its use to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim is directed to an abstract idea without a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. The additional elements of using computer hardware (an electronic device, a processor, a server, a network interface controller, an application program, a user interface, and various modules (in addition to the natural language database of Claim 2, the various units of Claims 2 and 3, and the large language model of Claim 3)) amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Therefore, the claim is not patent-eligible.
Dependent claims 4-11 and 13-17 do not include any additional elements beyond those identified above. They further define the abstract idea that is present in their respective independent claims and hence are abstract for at least the reasons presented above. As such, they do not integrate the abstract idea into a practical application, nor are they sufficient to amount to significantly more than the abstract idea when considered both individually and as an ordered combination.
Thus, the aforementioned claims are not patent-eligible.
Allowable Subject Matter
Claims 1-17 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112 and 35 U.S.C. 101 set forth in this Office action.
The closest prior art, Jessen et al. (US-20160350886) teaches a method for intelligent patent type recommendation and draft generation, wherein a user operates an electronic device, and the processor of the electronic device connects to a server via a network interface controller and executes an application program to perform patent type recommendation and draft generation, comprising the following steps at least: the user uses the user interface of the electronic device to cause the processor to execute an input module to receive input text content; the processor executes a semantic analysis module in the application program to perform semantic analysis on the text content; and semantic analysis module further couples with an industry classification module, a search module, and a database module to classify the text content by industry technology, and to search and compare the data in the database module.
Another close prior art, Walsh (US-20210011935), teaches displaying the recommended types of intellectual property to be applied to the user interface in a sorted order.
Another close prior art, Tran (US-11468527), teaches transmitting the data matched out to an intellectual property information disclosure module; the intellectual property information disclosure module analyzes the data and presents the information to the user through the user interface of the electronic device; and the user completes the login through a login module.
However, the combination of references do not teach statistically analyzing the data; the data analyzed and statistically analyzed is also transmitted to a recommendation module, which classifies and statistically analyzes the types of intellectual property in the data; the user selects a patent type through the user interface; the user uses the user interface to cause the processor to execute the input module to receive input technical description; the processor executes the semantic analysis module and a content generation module to generate summary content and a simplified diagram; the following are further comprised: the processor executes the recommendation module to analyze the generated summary content and simplified diagram, and to provide a recommended patent type to be applied; the intellectual property information disclosure module further evaluates each patent type and generates a patent risk assessment report, which is presented in the information of the recommended patent type through the user interface at the same time; the user selects the patent type to be applied through the user interface, and the processor executes the semantic analysis module and the content generation module to generate a patent disclosure document, claim content, and patent diagram, and to integrate them into a draft by incorporating a formatted template.
The closest NPL, Author “Controlling Patent Text Generation by Structural Metadata,” teaches patent text generation, using generative AI to generate claims, and a BERT model for patent classification. However, it does not teach searching and comparing data, transmitting matched data, analyzing the data, presenting the information to the user, displaying recommended types of intellectual property to be applied in a sorted order, analyzing generated summary content and simplified diagram, to provide a recommended patent type to be applied, or evaluating each patent type and generating and presenting a patent risk assessment report.
Conclusion
The prior art made of record and not relied upon, considered pertinent to applicant’s disclosure or directed to the state of art, is listed on the enclosed PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARMA EL-CHANTI whose telephone number is (571)272-3404. The examiner can normally be reached T-Sa 10am-6pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at (571)270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARMA A EL-CHANTI/Examiner, Art Unit 3629 /SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
Prosecution Insights