DETAILED ACTION
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 .
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.
Claim Objections
Claims 7 and 20 are objected to because of the following informalities:
a. In the second line of Claim 7, please change “pre-trail” to --pre-trial-- to correct an apparent typographical error.
b. Regarding Claim 20, since computer code is non-physical information, it is more accurate to state that the non-transitory computer readable medium stores the computer code thereon, rather than that the medium comprises the computer code. Also, a computer readable medium claim typically states that the computer code, upon execution by a computing system, causes the computing system to perform the listed functions. Please correct these issues.
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 following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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) or pre-AIA 35 U.S.C. 112, sixth paragraph, 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 limitation(s) is/are: “hallucination prevention component” in Claim 13; and “prompt generator configured to generate…” in Claim 13.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/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) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (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) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim(s) 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per Claim(s) 1, 13, and 20, Claim(s) 1, 13, and 20 recite(s):
- receiving a request to generate a legal document;
- receiving legal information associated with the request to generate the legal document;
- (a prompt generator configured to) generating a first query using the legal information to generate the legal document, the first query presented to a primary model;
- receiving a preliminary legal document result from the primary model;
- (hallucination prevention configured to) checking for hallucinations by verifying a legal citation included in the preliminary legal document by using a secondary model, wherein the legal citation references a court case;
- generating a verified legal document including the legal citation.
Each of the above limitations falls within the abstract-idea category of “Certain methods of organizing human activity.” Specifically, those limitations relate to the following subject matter that is grouped into the category of “Certain methods of organizing human activity”:
- commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations): generates legal documents which would be a legal interaction, and possibly commercial as well;
- managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions): helps a user generate legal documents.
To the extent that any of these limitations are recited alongside recitations of generic computer components, as described below in this rejection: If a claim limitation, under its broadest reasonable interpretation, covers subject matter recognized as certain methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain method of organizing human activity” grouping of abstract ideas. Accordingly, the claim(s) recite an abstract idea.
This judicial exception is not integrated into a practical application because the additional elements when considered both individually and as an ordered combination do not integrate the abstract idea into a practical application. The claim(s) recite the following additional elements/limitations, each of which are addressed in the list below with the reason(s) why they do not integrate the abstract idea into a practical application:
- artificial intelligence (AI); a system; an interface configured; an AI model interface; component; a non-transitory computer readable medium comprising: computer code: These element(s)/limitation(s) amount to mere instructions to apply an exception. See MPEP 2106.05(f). In making this determination, examiners may consider whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Mere instructions to apply an exception is a consideration with respect to both integration of an abstract idea into a practical application and significantly more. MPEP 2106.05(f)(2) states: “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).” This is the case with these particular claim element(s)/limitation(s). Those elements/limitations do not meaningfully limit the claim because implementing an abstract idea on a generic computer does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Therefore, these particular claim element(s)/limitation(s) do not integrate the abstract idea into a practical application for at least this reason.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Accordingly, the 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. The claim(s) are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception, either individually or as an ordered combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of computer-related components amount 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.
The claim(s) are not patent eligible.
As per dependent claim(s) 2-12 and 14-19, these claim(s) incorporate the above abstract idea via their dependencies on the respective independent claim(s). The additional element(s)/limitation(s) of the respective independent claim(s) do not integrate the abstract idea into a practical application, nor do they add significantly more, with respect to those dependent claim(s), under the same reasoning as above with respect to the respective independent claim(s).
Those dependent claim(s) add the following generic computer components, which do not integrate the abstract idea into a practical application, nor add significantly more, under the same reasoning as given above with respect to generic computer components in the independent claim(s). Those additional generic computer components and their corresponding dependent claim(s) are as follows:
- a large language model (LLM) (Claims 4 and 15);
- a second instantiation of the same AI model (Claim 5);
- a database that can be accessed (Claims 6 and 17);
- outputting for human review (Claim 9);
- a user interface accepting user input in a left panel and outputting in a right panel (Claim 10);
- Retrievel Augmented Generation (RAG) is used to prefetch data (Claim 11);
- another AI model (Claim 16).
The remaining added elements/limitations of those dependent claim(s) do not integrate the abstract idea into a practical application nor add significantly more because they all merely add further functional step(s) and/or detail to the abstract idea; as part of the abstract idea, they cannot integrate into a practical application or be significantly more than the abstract idea of which they are a part. For example, claim 3 merely adds detail to what the legal citation may be.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application, nor add significantly more. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Claim(s) 1-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea that is not integrated into a practical application and is without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5, 9, 11, 13-16, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams, US 20250315489 A1, in view of Gardner, US 20240296279 A1.
(NOTE REGARDING WILLIAMS REFERENCE: The actual filing date of Williams is before the actual filing date of the application being examined. Both Williams and the application being examined have one provisional application priority claim. The priority date for the application being examined is before the actual filing date of Williams. However, the priority date for Williams is before the priority date for the application being examined. MPEP 211.05(I)(A) states: “However, for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application (as in New Railhead), that claim in the nonprovisional application is not entitled to the benefit of the filing date of the provisional application.” For purposes of this Office action, Examiner is assigning Applicant’s actual filing date to claims which do not have such proper support in Applicant’s provisional application, and Examiner is assigning Applicant’s provisional priority date to claims which do have such proper support in Applicant’s provisional application. Regarding Williams, for each disclosure for which Examiner cited Williams in this Office action, Examiner has checked Williams’ provisional application and confirmed support for that disclosure in Williams’ provisional application.)
As per Claims 1, 13, and 20, Williams discloses:
- a method (paragraph [0002] (“In particular, the application relates to an apparatus, method, or program that allows computer systems to manage content generated with artificial intelligence (“AI”) by providing mechanisms for representing and reasoning about the provenance of said content.”));
- (an interface configured to) receiving a request to generate a legal document (paragraph [0063] (“legal document generation”); paragraph [0064] (“In this (preferred) embodiment of the present disclosure, the focus is on providing provenance information for document generation and management across the entire document lifecycle. The main use case involves drafting documents using Microsoft Word, which is the main word processing tool used in the legal industry. In this illustrative scenario, lawyers use Microsoft Word alongside AI-based assistants (e.g., third party LLMs accessed through a variety of means, such as plugins or direct visits to websites).”); paragraph [0065] (“A user operates a local workstation 403 (e.g., personal computer, tablet). The workstation has a web browser 408, a word processing program (e.g., Microsoft Word) 404, and connections to a local filesystem on the workstation 401 and a network filesystem 407.”));
- receiving legal information associated with the request to generate the legal document (paragraph [0069] (“FIG. 7 illustrates the (naïve) data flow of legal document construction using LLMs. The legal document 706 is usually stored in Microsoft Word format. It is almost always constructed from a legal document template 701. The authors of the legal document 706 draw from several sources, including client documents 702, legal databases 703 (e.g., LexisNexis, Westlaw), and secondary literature (e.g., legal encyclopedias, treatises) 704. Authors may also input information from these sources into an LLM 5, the output of which is added to the legal document 706.”));
- (a prompt generator configured to) generating a first query using the legal information to generate the legal document, the first query presented to a primary artificial intelligence (AI) model (paragraph [0066] (“The user submits a prompt 503 to the DP Plugin 402 (or alternatively to another module that subsequently calls the DP Plugin). The DP Plugin sends the prompt 503 to the AI Service 405. The AI Service 405 responds with content 502 and metadata 501. The DP Plugin will assemble provenance records for the content by using the metadata along with other information (e.g., timestamp, the prompt 503). The user can also use the web browser 408 to send the prompt 503 to the AI Service 405.”); paragraph [0069] (“FIG. 7 illustrates the (naïve) data flow of legal document construction using LLMs. The legal document 706 is usually stored in Microsoft Word format. It is almost always constructed from a legal document template 701. The authors of the legal document 706 draw from several sources, including client documents 702, legal databases 703 (e.g., LexisNexis, Westlaw), and secondary literature (e.g., legal encyclopedias, treatises) 704. Authors may also input information from these sources into an LLM 5, the output of which is added to the legal document 706.”));
- (a primary AI model interface configured to) receiving a preliminary legal document result from the primary AI model (paragraph [0063] (“legal document generation”); paragraph [0066] (“The user submits a prompt 503 to the DP Plugin 402 (or alternatively to another module that subsequently calls the DP Plugin). The DP Plugin sends the prompt 503 to the AI Service 405. The AI Service 405 responds with content 502 and metadata 501. The DP Plugin will assemble provenance records for the content by using the metadata along with other information (e.g., timestamp, the prompt 503). The user can also use the web browser 408 to send the prompt 503 to the AI Service 405. In this case any metadata is not captured and hence it is not represented in the return data flow to the web browser 408. The user merely takes the content 502 and copies portions into documents.”));
- (a hallucination prevention component configured to) checking for hallucinations by verifying a legal citation included in the preliminary legal document, wherein the legal citation references a court case (paragraph [0010] (whole paragraph); paragraph [0030] (““Case name validators” can lookup case citations in a legal database to make sure that they exist.”); paragraph [0043] (whole paragraph));
- generating a verified legal document including the legal citation (paragraph [0010] (whole paragraph); paragraph [0030] (““Case name validators” can lookup case citations in a legal database to make sure that they exist.”); paragraph [0043] (whole paragraph); paragraph [0044] (whole paragraph); paragraph [0063] (“legal document generation”); paragraph [0066] (“The user submits a prompt 503 to the DP Plugin 402 (or alternatively to another module that subsequently calls the DP Plugin). The DP Plugin sends the prompt 503 to the AI Service 405. The AI Service 405 responds with content 502 and metadata 501. The DP Plugin will assemble provenance records for the content by using the metadata along with other information (e.g., timestamp, the prompt 503). The user can also use the web browser 408 to send the prompt 503 to the AI Service 405. In this case any metadata is not captured and hence it is not represented in the return data flow to the web browser 408. The user merely takes the content 502 and copies portions into documents.”));
- a system (paragraph [0002] (computer systems));
- a non-transitory computer readable medium comprising: computer code (paragraph [0002] (computer systems; software); paragraph [0064]).
Williams fails to disclose wherein verifying the citation is performed by using a secondary model. Gardner discloses wherein verifying the citation is performed by using a secondary model (paragraph [0006] (whole paragraph)). 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 invention of Williams such that verifying the citation is performed by using a secondary model, as disclosed by Gardner, 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.
As per Claims 2 and 14, the modified Williams fails to disclose wherein the citation is generated with a confidence score, wherein the confidence score corresponds with a likelihood the citation is not a hallucination. Gardner further discloses wherein the citation is generated with a confidence score, wherein the confidence score corresponds with a likelihood the citation is not a hallucination (paragraph [0006]; paragraphs [0088]-[0090]). 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 invention of the modified Williams such that the citation is generated with a confidence score, wherein the confidence score corresponds with a likelihood the citation is not a hallucination, as disclosed by Gardner, 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.
As per Claim 3, Williams further discloses wherein the legal citation is case law (paragraph [0010]; paragraph [0030]).
As per Claims 4 and 15, Williams further discloses wherein the primary AI model is a large language model (LLM) (paragraph [0009]; paragraph [0063]; paragraphs [0065]-[0066]).
As per Claim 5, the modified Williams fails to disclose wherein the secondary model is a second instantiation of the same primary AI model. Gardner further discloses wherein the secondary model is a second instantiation of the same primary AI model (paragraphs [0036]-[0037]; paragraph [0041]; paragraph [0043]; paragraph [0087]; paragraph [0091]). 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 invention of the modified Williams such that the secondary model is a second instantiation of the same primary AI model, as disclosed by Gardner, 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.
As per Claim 9, the modified Williams fails to disclose wherein if verifying the citation using the secondary model does not reach a confidence threshold, the citation is flagged for human review. Gardner further discloses wherein if verifying the citation using the secondary model does not reach a confidence threshold, the citation is flagged for human review (paragraph [0006]; paragraphs [0088]-[0090]). 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 invention of the modified Williams such that if verifying the citation using the secondary model does not reach a confidence threshold, the citation is flagged for human review, as disclosed by Gardner, 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.
As per Claim 11, Williams further discloses wherein Retrieval Augmented Generation (RAG) is used to prefetch data associated with legal citations corresponding to authoritative sources (paragraph [0009]; paragraph [0070]; paragraph [0076]).
As per Claim 16, the modified Williams fails to disclose wherein the secondary model is a secondary AI model. Gardner further discloses wherein the secondary model is a secondary AI model (paragraph [0004]; paragraph [0006]). 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 invention of the modified Williams such that the secondary model is a secondary AI model, as disclosed by Gardner, 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.
Claim(s) 6 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Gardner in further view of Wikipedia, “Westlaw,” www.wikipedia.org, version of article dated March 24, 2023, retrieved on February 7, 2026.
As per Claims 6 and 17, Williams further discloses wherein citation verification uses a legal database specializing in access to case law (paragraph [0030]; paragraph [0043]; paragraph [0065]; paragraph [0069]; paragraph [0076]).
The modified Williams wherein citation verification uses the secondary model. Gardner further discloses wherein citation verification uses the secondary model (paragraph [0006]). 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 invention of the modified Williams such that citation verification uses the secondary model, as disclosed by Gardner, 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.
The modified Williams fails to disclose wherein the legal database specializes in access to state and federal statutes, administrative codes, and law review articles. Westlaw discloses wherein the legal database specializes in access to state and federal statutes, administrative codes, and law review articles (first page, paragraph beginning with “Westlaw is an online legal…”). 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 invention of the modified Williams such that the legal database specializes in access to state and federal statutes, administrative codes, and law review articles, as disclosed by Westlaw, 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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Gardner in further view of Hershowitz, US 20110289105 A1.
As per Claim 7, the modified Williams fails to disclose wherein the legal document is a court filing. Hershowitz discloses wherein the legal document is a court filing (paragraph [0077]; paragraph [0147]). 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 invention of the modified Williams such that the legal document is a court filing, as disclosed by Hershowitz, 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.
Claim(s) 8 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Gardner in further view of Grow, US 6694315 B1.
As per Claims 8 and 19, the modified Williams fails to disclose wherein legal information associated with the request comprises jurisdiction information, plaintiff name, defendant name, and facts of a case. Grow discloses wherein legal information associated with the request comprises jurisdiction information, plaintiff name, defendant name, and facts of a case (column 8, lines 25-34; column 15, lines 39-50). 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 invention of the modified Williams such that legal information associated with the request comprises jurisdiction information, plaintiff name, defendant name, and facts of a case, as disclosed by Grow, 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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Gardner in further view of Lederer, US 20020023109 A1.
As per Claim 10, the modified Williams fails to disclose wherein a user interface accepts user input in a left panel and outputs the document in a right panel. Lederer discloses wherein a user interface accepts user input in a left panel and outputs the document in a right panel (paragraph [0004]; paragraph [0145]; paragraph [0147]; paragraph [0148]). 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 invention of the modified Williams such that a user interface accepts user input in a left panel and outputs the document in a right panel, as disclosed by Lederer, 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.
Claim(s) 12 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Williams in view of Gardner in further view of Collier, US 20160019665 A1.
As per Claim 12, the modified Williams fails to disclose wherein a complaint analyzer extracts facts and causes of action from a complaint, breaks down the legal elements for each cause of action, and identifies weaknesses in the complaint. Collier discloses wherein a complaint analyzer extracts facts and causes of action from a complaint, breaks down the legal elements for each cause of action, and identifies weaknesses in the complaint (paragraph [0012]; paragraph [0030]; paragraph [0033]; paragraph [0034]; paragraph [0035]; paragraph [0040]). 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 invention of the modified Williams such that a complaint analyzer extracts facts and causes of action from a complaint, breaks down the legal elements for each cause of action, and identifies weaknesses in the complaint, as disclosed by Collier, 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.
As per Claim 18, the modified Williams fails to disclose wherein the legal document is a legal pleading document. Collier discloses wherein the legal document is a legal pleading document (paragraph [0012]; paragraph [0030]; paragraph [0033]; paragraph [0034]; paragraph [0035]; paragraph [0040]). 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 invention of the modified Williams such that the legal document is a legal pleading document, as disclosed by Collier, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Pendyala, US 20160140210 A1 (systems and methods for automatic identification of potential material facts in documents).
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/NATHAN ERB/Primary Examiner, Art Unit 3628