DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 8 April 2025. This communication is the first action on merits. As of the date of this communication no Information Disclosure Statement (IDS) has been filed on behalf of this case. 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 original / previously presented.
Claims 1-20 are currently pending and have been examined.
Priority
The application 19/173,546 filed on 8 April 2025 claims priority from US provisional application 63/631,154 filed on 8 April 2024.
Claim Interpretation
The Office is interpreting the claimed “non-generative AI algorithm” as an ‘AI algorithm’ that is ‘non-generative’, which is supported by Applicant’s specification ¶[0106]. This is not interpreted as any algorithm that is not generative AI. If the Applicant disagrees with this interpretation, the Office recommends amending the claim language to clarify.
Claim Objections
Claims 7 and 18 are objected to because of the following informalities. Appropriate correction is required.
Claims 7 and 18:
Claims 7 and 18 do not end in any punctuation. The Office recommends adding a period at the end of claim 7 and at the end of claim 18 to distinguish where the claim ends and the next claim begins.
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.
Claims 1-20:
Step 1:
Claims 1-11 recite a method; claims 12-19 recite a system, and claim 20 recites a non-transitory computer readable medium. Since the claims recite either a process, machine, manufacture, or composition of matter, the claims satisfy Step 1 of the Subject Matter Eligibility Framework in MPEP 2106 and the 2019 Patent Examination Guidelines (PEG). Analysis proceeds to Step 2A Prong One.
Step 2A – Prong One:
Claims 1-20 recite an abstract idea.
Independent claims 1, 12, and 20 recite: identifying a common concept shared between a set of claim texts of the plurality of claim texts; presenting the common concept in a tabular form including a first column listing the common concept and additional columns corresponding to respective claim texts of the pluralities of claim texts indicating a presence or absence of the common concept; verifying that the common concept has corresponding representations within the set of claim texts; and in response to the verifying, generating an interactive matrix, wherein the interactive matrix visually represents a relationship between the common concept and the set of claim texts.
The claims as a whole recite methods of organizing human activities. First, the limitations of identifying a common concept shared between a set of claim texts of the plurality of claim texts; presenting the common concept in a tabular form including a first column listing the common concept and additional columns corresponding to respective claim texts of the pluralities of claim texts indicating a presence or absence of the common concept; verifying that the common concept has corresponding representations within the set of claim texts; and in response to the verifying, generating an interactive matrix, wherein the interactive matrix visually represents a relationship between the common concept and the set of claim texts are certain methods of organizing human activities. For instance, these limitations represent the sub-groupings of managing personal behavior (or relationships or interactions between people), and following rules or instructions. For example, managing personal behavior or relationships or interactions between people includes identifying common concept…, presenting the common concept in a tabular form… indicating a presence or absence of the common concept…, verifying that the common concept has corresponding representations…, and in response to the verifying generating an interactive matrix… ; and following rules or instructions includes identifying common concept…, presenting the common concept in a tabular form… indicating a presence or absence of the common concept…, verifying that the common concept has corresponding representations…, and in response to the verifying generating an interactive matrix, wherein the interactive matrix visually represents a relationship between the common concept and the set of claim texts. The presence of generic computer components such as a generative artificial intelligence tool (i.e. software / program on one or more servers / devices / computers, per Applicant specification ¶[0134], ¶[0136]), a non-generative AI algorithm (software / program on one or more servers / devices / computers, per Applicant specification ¶[0134], ¶[0136], ¶[0141]), processing unit, storage device, non-transitory computer-readable medium, does not preclude the steps from reciting certain methods of organizing human activities, since the number of people involved in the activities is not dispositive as to whether a claim limitation falls within this grouping and instead it is based on whether an activity itself falls within one of the sub-groupings. If a claim limitation, under its broadest reasonable interpretation, covers certain methods of organizing human activity (e.g. managing personal behavior or relationships or interactions between people, following rules or instructions) regardless of the recitation of generic computer components or other machinery in its ordinary capacity, then it falls within the ‘Certain Methods of Organizing Human Activity’ grouping of abstract ideas. Accordingly, the claims recite an abstract idea. Analysis proceeds to Step 2A Prong Two.
Step 2A – Prong Two:
This judicial exception is not integrated into a practical application. First, claims 1, 12, and 20 as a whole merely describes how to generally ‘apply’ the concept of certain methods of organizing human activities in a computer environment. The claimed computer components (i.e. a generative artificial intelligence tool (generative AI tool), a non-generative AI algorithm, processing unit, storage device, non-transitory computer-readable medium) are recited at a high-level of generality and are merely invoked as tools to perform manual processes. Simply implementing the abstract idea on a generic / general purpose computer is not a practical application of the abstract idea. See MPEP 2106.04(d) and 2016.05(f). 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.
Next, the additional element of receiving and its step of receiving a plurality of claim texts corresponding to a plurality of claims originating from a patent document is recited at a high level of generality (i.e. as a general means of gathering data for subsequent identifying), and amounts to mere data gathering, which is a form of insignificant extra-solution activity and not a practical application. See MPEP 2106.04(d) and 2106.05(g). Furthermore, the processing unit (generic computer / general computer component) is only being used as a tool in the receiving, which is also not indicative of integration into a practical application. See MPEP 2106.04(d) and 2106.05(f). Note that there are no particular technical steps regarding receiving more than using computers as a tool to perform an otherwise manual process (to receive data / information). Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Next, the additional element of artificial intelligence in the limitations (e.g. identifying, using a generative artificial intelligence tool (generative AI tool), a common concept shared between a set of claim texts of the plurality of claim texts; verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts) does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e. artificial intelligence (generative / non-generative AI)), and as such does not provide integration into a practical application. See MPEP 2106.04(d) and 2106.05(h). Note that there are no particular technical details regarding the algorithm steps or processes regarding either the generative AI tool, or the non-generative AI algorithm. Hence, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The combination of these additional elements is no more than mere instructions to apply the exception using generic computers / general computer components (a generative artificial intelligence tool (generative AI tool), a non-generative AI algorithm, processing unit, storage device, non-transitory computer-readable medium); and adding high-level extra-solution and/or post-solution activities. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. Hence, the claim is directed to an abstract idea. Analysis proceeds to Step 2B.
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the additional element of using a non-generative AI algorithm, processing unit, storage device, non-transitory computer-readable medium to perform identifying common concept…, presenting the common concept in a tabular form… indicating a presence or absence of the common concept…, verifying that the common concept has corresponding representations…, and in response to the verifying generating an interactive matrix… amounts to no more than mere instructions to ‘apply’ the exception using generic / general computers. The same analysis applies here in Step 2B, i.e. mere instructions to apply an exception on a generic computer cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). Hence, these features do not provide an inventive concept / significantly more.
As discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the additional elements regarding the receiving are recited at a high level of generality (i.e. as a general means of gathering data for subsequent identifying), and amounts to mere data gathering, which is a form of insignificant extra-solution activity. The same analysis applies here in Step 2B, i.e. adding insignificant extra-solution activity to the judicial exception does not provide integration into a practical application in Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(g). The use of the computer (i.e. processing unit) in these steps merely represents using a generic / general purpose computer as a tool, and is not indicative of an inventive concept. See MPEP 2106.05(f). Furthermore, these receiving steps are also claimed at a high level of generality, and/or as insignificant extra-solution activities (e.g. data gathering) representing computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), using a telephone for image transmission (TLI Communications), a computer receives and sends information over a network (buySAFE), electronically scanning or extracting data from a physical document (Content Extraction). See the Applicant’s specification Fig 8, ¶[0117] describing the additional element of receiving claim text from a patent document at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Hence, these features do not provide an inventive concept / significantly more.
As discussed above in Step 2A Prong Two with respect to integration of the abstract idea into a practical application, the additional element regarding artificial intelligence does no more than generally link the use of the judicial exception to a particular technological environment or field of use (i.e. artificial intelligence (generative / non-generative AI)). The same analysis applies here in Step 2B, i.e. generally linking the use of the judicial exception to a particular technological environment or field of use does not provide integration into a practical application in Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(h). There are no particular claimed details regarding the algorithm steps involved to train the artificial intelligence tool or AI algorithm, or in implementing the tool or algorithm more than using computers as a tool to perform an otherwise manual process (i.e. identifying a common concept, verifying the concept has representation); and at this high level of detail it is functionally equivalent to performing a judicial exception on a computer. See MPEP 2106.05(f) citing Electric Power Group, LLC v. Alstom, S.A. (Fed. Cir. 2016) stating the recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words ‘apply it’. Furthermore, see the Applicant’s specification ¶[0085], ¶[0091-103] describing the additional element of the generative AI tool and its functions at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the technical particulars to satisfy 35 USC 112(a). See the 2023 publication “The Difference Between Generative AI And Traditional AI: An Easy Explanation For Anyone” to Marr demonstrating the well-understood, routine, conventional nature of a non-generative AI algorithm (see Marr Section “The Key Difference” detailing traditional AI systems are primarily used to analyze data and make predictions). See the Applicant’s specification ¶[0106] describing the additional element of using a non-generative AI algorithm to review / approve / modify / reject in the verification process at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Hence, these features do not provide an inventive concept / significantly more.
The claims do not improve another technology or technical field. Instead the claims represent a generic implementation of organizing human activities ‘applied’ by generic / general purpose computers, generally ‘applied’ to a field of use, and using general computer components in extra-solution capacities such as data gathering. The claims do not provide meaningful limitations beyond generally linking the user of an abstract idea to a particular technological environment. At best, the claims are more directed towards solving a business / commercial / entrepreneurial problem (i.e. how to determine what concept a set of claims represent), that is tangentially associated with a technology element (e.g. artificial intelligence), rather than solving a technology based problem. See MPEP 2106.05(a). The claims do not improve the functioning of a computer itself. The claims do not improve the functioning of artificial intelligence itself. The claims are more directed towards improving a business / commercial / entrepreneurial process rather than improving a computer outside of a business use, i.e. using computers a tool. The claims do not apply the judicial exception with or by use of a particular machine. The claims do not effect a transformation or reduction to a particular article to a different state or thing. The claims do not add a specific limitation other than what is well understood, routine, and conventional in a way that confines the claim to a particular useful application.
Viewing the claim limitations as an ordered combination does not add anything further than looking at each of the claim limitations individually, both with respect to the independent claims 1, 12, 20, and further considering the addition of dependent claims 2-11, 13-19. Note that the combination of limitations and claim elements add nothing that is not already present when the steps are considered separately, simply reciting implementation as performed by using generic computers / general computer components, see Alice (2014), and does not provide a non-conventional and non-generic arrangement of various computer components to achieve a technical improvement, see BASCOM Global Internet v. AT&T Mobility LLC (2016). Hence, the ordered combination of elements does not provide significantly more. With respect to the dependent claims:
Dependent claims 2 and 13: The limitation receiving a patent portfolio comprising a plurality of patent documents, wherein the patent document is part of the plurality of patent documents represents an additional element (high level extra-solution activity of data gathering) that is not indicative of a practical application or significantly more. The recitation of the processing unit (claim 13) is a computer component recited at a high level of generality and amounts to using a computer as a tool in its ordinary capacity (i.e. to receive information). Furthermore, the receiving step here is claimed at a high level of detail and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), a computer receives and sends information over a network (buySAFE). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claims 3 and 14: The limitation wherein receiving the plurality of claim texts comprises automatically scraping patent claim text from the patent document (high level extra-solution activity of data gathering) that is not indicative of a practical application or significantly more. Furthermore, the scraping step here is claimed at a high level of detail and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular receiving or transmitting data over a network (Symantec), a computer receives and sends information over a network (buySAFE); electronically scanning or extracting data from a physical document (Content Extraction). See the Applicant’s specification ¶[0034], ¶[0045], ¶[0071] describing the additional element of scraping at such a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claims 4 and 15: The limitation wherein identifying, using the generative AI tool, the common concept comprises iteratively analyzing the plurality of claim texts for text patterns across at least two claim texts of the plurality of claim texts is further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claim. The recitation of the generative AI tool amounts to ‘applying’ the abstract idea on a general purpose computer, and generally linking use of the judicial exception by a technology (artificial intelligence), noting that without providing any particular technical details how the analyzing is rooted in artificial intelligence this recitation is analogous to applying the judicial exception on a general purpose computer. See the Applicant’s specification ¶[0122] describing use of an AI Tool for patterns at a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claims 5 and 16: The limitation wherein identifying, using the generative AI tool, the common concept comprises analyzing the plurality of claim texts for concept frequency across at least two claim texts of the plurality of claim texts is further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claim. The recitation of the generative AI tool amounts to ‘applying’ the abstract idea on a general purpose computer, and generally linking use of the judicial exception by a technology (artificial intelligence), noting that without providing any particular technical details how the analyzing is rooted in artificial intelligence this recitation is analogous to applying the judicial exception on a general purpose computer. See the Applicant’s specification ¶[0123] describing use of an AI Tool for concept frequency at a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claims 6 and 17: The limitation wherein the generative AI tool is a transformer-based large language model represents an additional element (generally linking use of the judicial exception to a field of use / technology: transformer based large language models) that is not indicative of a practical application or significantly more. See the Applicant’s specification ¶[0122] describing use of a generative AI tool as a transformer-based large language model at a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claims 7 and 18: The limitation wherein verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts includes using a cosine similarity calculation between the common concept and a respective claim text of the plurality of claim texts is further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claims, and also a / mathematical concept (mathematical calculation). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claims 8 and 19: The limitations receiving an indication that a cosine similarity value exceeds a threshold; and based on receiving the indication, executing the generative AI tool a subsequent time to update the common concept are further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claims. The recitation of the generative AI tool amounts to ‘applying’ the abstract idea on a general purpose computer, and generally linking use of the judicial exception by a technology (artificial intelligence), noting that without providing any particular technical details how the updating is rooted in artificial intelligence this recitation is analogous to applying the judicial exception on a general purpose computer. See the Applicant’s specification ¶[0129] describing use of a generative AI tool at a subsequent time to update the common concept at a high level that indicates this additional element is sufficiently well-known that the specification does not need to describe the particulars to satisfy 35 USC 112(a). Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Dependent claim 9: The limitation storing an indication of a relationship between the common concept and the set of claim texts represents an additional element (high level extra-solution activity of electronic record keeping) that is not indicative of a practical application or significantly more. Furthermore, the storing step here is claimed at a high level of detail and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular electronic record keeping (Alice), storing and retrieving information in memory (Versata; OIP Techs). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 10: First, the limitation receiving a request, via the interactive matrix, to modify the common concept to a modified common concept for a patent claim text of the set of claim texts is further directed to a method of organizing human activity (managing personal behavior) as described in the independent claim. Second, the limitation updating a stored relationship of the patent claim text with the modified common concept represents an additional element (high level extra-solution activity of electronic record keeping) that is not indicative of a practical application or significantly more. Furthermore, the updating step here is claimed at a high level of detail and represents computer functions that the courts have recognized as well-understood, routine, and conventional functions that do not present an inventive concept. See MPEP 2106.05(d)(II) in particular electronic record keeping (Alice), storing and retrieving information in memory (Versata; OIP Techs). For the reasons described above with respect to the independent claims, this judicial exception is not meaningfully integrated into a practical application, and is not significantly more than the abstract idea.
Dependent claim 11: The limitation wherein the interactive matrix includes highlighting a patent term in the set of claim texts associated with the common concept is further directed to a method of organizing human activity (managing personal behavior, following rules or instructions) as described in the independent claim. Similar to the independent claims, this recitation does not meaningfully integrate the abstract idea in a practical application, and is not significantly more than the abstract idea.
Therefore claims 1, 12, 20, and the dependent claims 2-11, 13-19 and all limitations taken both individually and as an ordered combination, do not integrate the judicial exception into a practical application, nor do they include additional elements that are sufficient to amount to significantly more than the judicial exception. Accordingly, claims 1-20 are ineligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or non-obviousness.
Claims 1-7, 9-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2012/0284199 A1 to Lundberg in view of US patent application publication 2025/0124055 A1 to Ruan et al (with support in US provisional patent application 63/589,809 filed on 12 October 2023).
Claim 1:
Lundberg, as shown, teaches the following:
A method comprising:
receiving a plurality of claim texts corresponding to a plurality of claims originating from a patent document (Lundberg ¶[0020], ¶[0052], ¶[0069] details extracting claim text and/or phrases from patent text of claims, including analyzing the claim text from a family of patent documents);
With respect to the following:
identifying, using a generative artificial intelligence tool (generative AI tool), a common concept shared between a set of claim texts of the plurality of claim texts;
Lundberg, as shown in Fig 2, ¶[0069-70], ¶[0134-135] details using semantic analysis of the claim text to identify automatically generated preliminary scope concepts (AGPSC) to identify similar phrases in each of a plurality of claims, identifying scope concepts shared by the claims, and the claim text may include a family of related patents to be analyzed (i.e. a common concept shared between a set of claim texts of a plurality of claim texts), but does not explicitly state using a generative artificial intelligence tool for this function. However, Ruan teaches this limitation, using semantics of content to find semantically similar content and text from IP documents; using generative AI tools to summarize and classify semantic and temporal relationships to generate summaries and reports with regard to an objective, which includes topic analysis of each retrieved content or group of retrieved content, semantic similarities and differences (Ruan Fig 1F, ¶[0036-38], ¶[0171-172], ¶[0190], ¶[0259] with corresponding provisional support in 63/589,809 Fig 1, ¶[0063], ¶[0085]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include identifying, using a generative artificial intelligence tool (generative AI tool), a common concept shared between a set of claim texts of the plurality of claim texts as taught by Ruan with the teachings of Lundberg, with the motivation to provide “content semantic analytics, temporal relationship analytics, corresponding summary and visualization of analytics results, and interactive user interfaces for various applications to fulfill user’s needs” (Ruan ¶[0036] with corresponding provisional support in 65/589,809 ¶[0032]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include identifying, using a generative artificial intelligence tool (generative AI tool), a common concept shared between a set of claim texts of the plurality of claim texts as taught by Ruan in the system of Lundberg, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Lundberg (in view of Ruan) also teaches the following:
presenting the common concept in a tabular form including a first column listing the common concept and additional columns corresponding to respective claim texts of the pluralities of claim texts indicating a presence or absence of the common concept (Lundberg Fig 1A-1B, ¶[0060], ¶[0063], ¶[0065], ¶[0069] details displaying tables and columns for the claim text, AGPSCs (automatically generated preliminary scope concept) phrases, and location mapping of the AGPSC to claim);
Ruan (of Lundberg in view of Ruan) also teaches the following:
verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts; and
Lundberg, as shown in ¶[0134] details verifying keywords are present throughout claims (e.g. both claims 1 and 10 have the same keywords and they are in the same location), providing assurance to the user that the scope concept maps to both claims, but does not explicitly state verifying using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts. However, Ruan teaches this remaining limitation, using Synopsis AI to verify that the matter included in the claim text is included in the patent specification and supported, and highlighting unsupported new matter added as text; and noting that the generative AI based assistant only ‘works with’ Synopsis AI such that the generative AI based assistant is used to generate the reports summarizing the features, and the generative AI sends the new matter to and unique features to Synopsis AI which then verifies the support of each unique feature / new matter, i.e. Synopsis AI is not the generative-AI (Ruan ¶[0259-260] with corresponding provisional support in 65/589,809 ¶[0085-86]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts as taught by Ruan with the teachings of Lundberg (in view of Ruan), with the motivation to “help user quickly identify potential infringement or validity issues” (Ruan ¶[0259] with corresponding provisional support in 65/589,809 ¶[0085]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts as taught by Ruan in the system of Lundberg (in view of Ruan), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Lundberg (in view of Ruan, applying that the verifying also includes common concept representation in the claim text, per Ruan above) also teaches the following:
in response to the verifying, generating an interactive matrix, wherein the interactive matrix visually represents a relationship between the common concept and the set of claim texts (Lundberg Fig 1A-1B, ¶[0060-62], ¶[0069-70], ¶[0134] details creating a matrix of rows and columns with different scope concept phrases, claims, and locations in claims with highlights where a scope concept searched is contained in a claim (i.e. verifying, interactive matrix), and the user may change the number of words to highlight by editing or adding phrases or by mousing over designated phrases (i.e. interactive)).
Claim 2:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg also teaches the following:
receiving a patent portfolio comprising a plurality of patent documents, wherein the patent document is part of the plurality of patent documents (Lundberg ¶[0069] details analyzing a family of patents to be analyzed and extracting claim text from the documents of all members of the family of related patents).
Claim 3:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg also teaches the following:
wherein receiving the plurality of claim texts comprises automatically scraping patent claim text from the patent document (Lundberg Fig 10, ¶[0069], ¶[0087], ¶[0093] details extracting text from the patent documents, including downloading claim text from a patent office website).
Claim 4:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg (in view of Ruan, applying use of the generative AI tool for identifying, per Ruan above), also teaches the following:
wherein identifying, using the generative AI tool, the common concept comprises iteratively analyzing the plurality of claim texts for text patterns across at least two claim texts of the plurality of claim texts (Lundberg Fig 1B, ¶[0065-66], ¶[0069], ¶[0130] details identifying similar or equivalent words or concepts across the set of claims of one or more patents or patent applications).
Claim 5:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg (in view of Ruan, applying use of the generative AI tool for identifying, per Ruan above), also teaches the following:
wherein identifying, using the generative AI tool, the common concept comprises analyzing the plurality of claim texts for concept frequency across at least two claim texts of the plurality of claim texts (Lundberg ¶[0066], ¶[0069] details searching the claim text to identify and delimit the same or similar phrases in each of a plurality of claims of the specified patents, and determining a quality measure regarding the number of claims containing each AGPSC (automated generated preliminary scope concept), i.e. concept frequency).
Claim 6:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Ruan also teaches the following:
wherein the generative AI tool is a transformer-based large language model (Ruan ¶[0038] details using generative AI based on large language model (LLMs) including transformer based models such as BERT, GPT-3/4, Llama (large language model meta AI).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the generative AI tool is a transformer-based large language model as taught by Ruan with the teachings of Lundberg (in view of Ruan), with the motivation to “help user quickly identify potential infringement or validity issues” (Ruan ¶[0259] with corresponding provisional support in 65/589,809 ¶[0085]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the generative AI tool is a transformer-based large language model as taught by Ruan in the system of Lundberg (in view of Ruan), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 7:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Ruan also teaches the following:
wherein verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts includes using a cosine similarity calculation between the common concept and a respective claim text of the plurality of claim texts (Ruan ¶[0130], ¶[0260], ¶[0303] (with support in provisional application 65/589,809 ¶[0051], ¶[0085]) details determining relationship paths for relevance using the cosine similarity algorithm for the user’s analytics goal, with a goal including identifying whether the unique features claimed in the continuation / CIP / divisional are new matter claimed supported in the specification)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts includes using a cosine similarity calculation between the common concept and a respective claim text of the plurality of claim texts as taught by Ruan with the teachings of Lundberg (in view of Ruan), with the motivation to “help user quickly identify potential infringement or validity issues” (Ruan ¶[0259] with corresponding provisional support in 65/589,809 ¶[0085]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein verifying, using a non-generative AI algorithm that the common concept has corresponding representations within the set of claim texts includes using a cosine similarity calculation between the common concept and a respective claim text of the plurality of claim texts as taught by Ruan in the system of Lundberg (in view of Ruan), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 9:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg also teaches the following:
storing an indication of a relationship between the common concept and the set of claim texts (Lundberg Fig 1A-1B, Fig 2, ¶[0060] details storing each phrase in the list of similar phrases and their locations in each claim starting at a particular word in the substructure).
Claim 10:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. With respect to the following:
receiving a request, via the interactive matrix, to modify the common concept to a modified common concept for a patent claim text of the set of claim texts (Lundberg Fig 11A-11C, ¶[0060], ¶[0088], ¶[0090] details editing or adding equivalent phrases, including editing the text or title of the scope concept, and receiving input of the user to split the AGPSC that is highlighted to be divided into one or more scope concepts (SPLIT), and receiving input to join / equate two or more different AGPSCs into a single scope concept (JOIN/EQUATE), and receiving input of the user to ignore the AGPSC that is highlighted (MAP)); and
updating a stored relationship of the patent claim text with the modified common concept (Lundberg Fig 13, ¶[0060], ¶[0092] details storing each phrase in the list of similar phrases and their locations in each claim starting at a particular word in the substructure, and finalizing the data structure with all the position mappings and claim map substructure with the final scope concepts).
Claim 11:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 1. Lundberg also teaches the following:
wherein the interactive matrix includes highlighting a patent term in the set of claim texts associated with the common concept (Lundberg Fig1A-1B, ¶[0020], ¶[0061] details highlighting the common phrases / concepts in the claims in different colors).
Claim 12:
Claim 12 recites substantially similar limitations as claim 1 and therefore claim 12 is rejected under the same rationale and reasoning presented above for claim 1.
Claim 13:
Claim 13 recites substantially similar limitations as claim 2 and therefore claim 13 is rejected under the same rationale and reasoning presented above for claim 2.
Claim 14:
Claim 14 recites substantially similar limitations as claim 3 and therefore claim 14 is rejected under the same rationale and reasoning presented above for claim 3.
Claim 15:
Claim 15 recites substantially similar limitations as claim 4 and therefore claim 15 is rejected under the same rationale and reasoning presented above for claim 4.
Claim 16:
Claim 16 recites substantially similar limitations as claim 5 and therefore claim 16 is rejected under the same rationale and reasoning presented above for claim 5.
Claim 17:
Claim 17 recites substantially similar limitations as claim 6 and therefore claim 17 is rejected under the same rationale and reasoning presented above for claim 6.
Claim 18:
Claim 18 recites substantially similar limitations as claim 7 and therefore claim 18 is rejected under the same rationale and reasoning presented above for claim 7.
Claim 20:
Claim 20 recites substantially similar limitations as claim 1 and therefore claim 20 is rejected under the same rationale and reasoning presented above for claim 1.
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over US patent application publication 2012/0284199 A1 to Lundberg in view of US patent application publication 2025/0124055 A1 to Ruan et al (with support in US provisional patent application 63/589,809 filed on 12 October 2023), as applied to claims 7 and 18 above, and further in view of US patent application publication 2024/0193204 A1 to Kuhn et al.
Claim 8:
Lundberg in view of Ruan, as shown above, teach the limitations of claim 7. With respect to the following:
receiving an indication that a cosine similarity value exceeds a threshold; and
Ruan (of Lundberg in view of Ruan) as shown in ¶[0130], ¶[0303] (with support in provisional application 65/589,809 ¶[0051], ¶[0085]) details computing a cosine similarity value, but does not explicitly state receiving an indication that a cosine similarity value exceeds a threshold. However, Kuhn teaches this limitation, calculating a cosine similarity score and determining when the similarity score is above a predetermined threshold (e.g., 90%, 95%, 98%, 99%) then the generated output may be undesirable (Kuhn ¶[0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include receiving an indication that a cosine similarity value exceeds a threshold as taught by Kuhn with the teachings of Lundberg in view of Ruan, with the motivation of determining when “the transformativeness of the generated output may be undesirable” (Kuhn ¶[0057]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include receiving an indication that a cosine similarity value exceeds a threshold as taught by Kuhn in the system of Lundberg in view of Ruan, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
With respect to the following:
based on receiving the indication, executing the generative AI tool a subsequent time to update the common concept.
Lundberg, as shown in ¶[0059] details the outputted results are ABPSCs (automatically generated preliminary scope concepts, and ¶[0099], ¶[0113] details the concepts can be subsequently updated; but does not explicitly state based on receiving the indication, executing the generative AI tool at a subsequent time to update the result. However, Kuhn teaches this remaining limitation, after determining a cosine similarity score is above a threshold, making an update (e.g. reducing an embedding), and then using the generative AI to generate a new output based on the updates (i.e. update the common concept, per Lundberg) (Kuhn ¶[0057]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include based on receiving the indication, executing the generative AI tool a subsequent time to update the (result) as taught by Kuhn with the teachings of Lundberg in view of Ruan (in view of Kuhn), with the motivation “to achieve a desirable (e.g. guaranteed) transformativeness” (Kuhn ¶[0057]). In addition, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include based on receiving the indication, executing the generative AI tool a subsequent time to update the (result) as taught by Kuhn in the system of Lundberg in view of Ruan (in view of Kuhn), since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable. See MPEP 2141 citing KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007).
Claim 19:
Claim 19 recites substantially similar limitations as claim 8 and therefore claim 19 is rejected under the same rationale and reasoning presented above for claim 8.
Additional Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Shin et al., “Generation and Application of Patent Claim Map: Text Mining and Network Analysis”, Journal of Intellectual Property Rights, Vol 10, May 2005, p. 198-205: details text mining of patent claim overlap.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN TALLMAN whose telephone number is (571)272-3198. The examiner can normally be reached Monday-Friday 9-5.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BRIAN TALLMAN
Examiner
Art Unit 3628
/BRIAN A TALLMAN/Examiner, Art Unit 3628
/MICHAEL P HARRINGTON/Primary Examiner, Art Unit 3628
