Notice of Pre-AIA or AIA Status
The present application 19/221,503, filed on 11/18/2024 (or after March 16, 2013), is being examined under the first inventor to file provisions of the AIA (First Inventor to File).
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 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.
This application is a CON of 18/208,228 filed on 06/09/2023 is now US PAT 12339880 18/208,228 is a CON of 17/125,979 filed on 12/17/2020 is now US PAT 11714839, 17/125,979 is a CON of 15/722,868 1filed on 0/02/2017 is now US PAT 10,885,078, 15/722,868 is a CON of 13/464,598 filed on 05/04/2012 is now US PAT 9,904,726, 13/464,598 has DOM PRO 61/561,502 filed on 11/18/2011, 13/464,598 has DOM PRO 61/542,515 filed on 10/03/2011, 13/464,598 has DOM PRO 61/482,596 filed on 05/04/2011
DETAILED ACTION
Claims 1-20 are pending in this application.
Drawings
The Drawings filed on 5/29/2025 are acceptable for examination purpose
Priority
Acknowledgment is made of applicant’s claim for domestic priority application
U.S. Provisional Patent application serial number # 61/561,502 filed on 11/18/2011, 61/542,515 filed on 10/03/2011, 61/482,596 filed on 05/04/2011 under 35 U.S.C. 119 (e)
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1-3,6, 8-10,13, 15-17, 20, is/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As to claim 1,8,15, it is unclear what is meant by “select most probable term meanings…………….”, “generate preliminary scope concepts based on the selected most probable term meanings”, the term “select most probable term” is a relative term that makes the claim indefinite
As to claim 2,9,16, it is unclear what is meant by analyze relationships between senses at multiple levels from L1 through L6, wherein L1 contains closely related semantic terms and each subsequent level represents “increasingly abstract groupings”, the term “increasingly abstract groupings” is a relative term that makes the claim indefinite
As to claim 3,10,17, it is unclear what is meant by “apply lower weights to relationships found at higher taxonomic levels indicating more abstract relationships”, the term “more abstract relationships” is a relative term that makes the claim indefinite
As to claim 5,12,19, it is unclear what is meant by “polysemy count weights indicating relative information value based on number of different meanings”, the term “number of different meanings” is a relative term that makes the claim indefinite
As to claim 6,13,20, it is unclear what is meant by “frequency-based probable meanings”, he term “probable meanings” is a relative term that makes the claim indefinite
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. The judicial exception is not integrated into a practical application.
Claim 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the 2019 Revised Patent Subject Matter Eligibility Guidance, Federal Register (84 FR 50) on January 7, 2019 hereinafter 2019 PEG
Step 1. In accordance with Step 1 of the eligibility inquiry (as explained in MPEP 2106), it is noted that the method of claim 1,8,15, directed to one of the eligible categories of subject matter and therefore satisfy Step 1.
Step 2A. In accordance with Step 2A prong one of the 2019 PEG, the limitations reciting the abstract idea are highlighted, and the limitations directed to additional elements are highlighted, as set forth in exemplary claim 1
Claim 1,8,15.
“A system for automated patent claim analysis, comprising:
at least one processor; and
memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
receive a first set of patent claims;
generate a moving analysis window of a configurable size that encompasses a selected number of terms;
for each position of the moving analysis window:
determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels;
assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights;
generate co-occurrence statistics for term senses at selected taxonomic levels;
select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics;
generate preliminary scope concepts based on the selected most probable term meanings; and
display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims”, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example assign weighted taxonomic values, generate co-occurance statistics, select most probable term, generate preliminary scope concepts…., in the context of this claim encompasses the user thinking data collection and/or data statistics
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas set forth in the 2019 PEG. Accordingly, the claim recites an abstract idea.
With respect to Step 2A prong two of the 2019 PEG, the judicial exception is not integrated into a practical application. The additional elements are directed to method steps, however, these elements fail to integrate the abstract idea into a practical application because they fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular data structure of assign weighted taxonomic values, generate co-occurance statistics, select most probable term, generate preliminary scope concepts, to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Furthermore, although these elements have been fully considered, they are directed to the use of generic computing elements (para 0050-0061, of the instant specification make it clear that the disclosed functionality is implemented on well-known computing systems and general purpose computing devices) to perform the abstract idea, which is not sufficient to amount to a practical application (as noted in the 2019 PEG) and is amount to simply saying "apply it" using a general purpose computer, which merely serves to tie the abstract idea to a particular technological environment computer based operating environment) by using the computer as a tool to perform the abstract idea.
Since the analysis of Step 2A prong one and prong two results in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
Step 2B. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional method limitations are directed to a generic computer, at a very high level of generality and without imposing meaningful limitations on the scope of the claim. In addition para: 0050-0061 of the instant specification describe generic off-the-shelf computer-based elements for implementing the claimed invention which does not amount to significantly more than the abstract idea and is not enough to transform an abstract idea into eligible subject matter. Such generic, high-level, and nominal involvement of a computer or computer-based elements for carrying out the invention merely serves to tie the abstract idea to a particular technological environment, which is not enough to render the claims patent-eligible, as noted at pg. 74624 of Federal Register/Vol. 79, No. 241, citing Alice, which in turn cites Mayo. Further, See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2359-60, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to 'implement[ing] the abstract idea of intermediated settlement on a generic computer', it cannot save O/P's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). See also, Affinity Labs of Texas LLC v. DirecTV LLC, 838 F.3d 1253, 1257-1258 (Fed. Cir. 2016) (mere recitation of a GUI does not make a claim patent-eligible); Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("the interactive interface limitation is a generic computer element".)
The additional elements are broadly applied to the abstract idea at a high level of generality ("similar to how the recitation of the computer in the claims in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer,") as explained in MPEP § 2106.05(f)) and they operate in a well-understood, routine, and conventional manner.
MPEP § 2106.05 (d)(II) sets forth the following:
The courts have recognized the following computer functions as well-understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g. at a high level of generality) as insignificant extra-solution activity.
Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec...; TLI Communications LLC v. AV Auto. LLC...; OIP Techs., Inc., v. Amazon.com, Inc... ; buySAFE, Inc. v. Google, Inc...;
Performing repetitive calculations, Flook ... ; Bancorp Services v. Sun Life...;
Electronic recordkeeping, Alice Corp...; Ultramercial... ;
Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc...;
Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank...; and
A web browser's back and forward button functionality, Internet Patent Corp. v. Active Network, Inc.
Courts have held computer-implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).
Claim 2,9,16, further elaborates the instructions to determine taxonomic relationships further comprising instructions to:
“analyze relationships between senses at multiple levels from L1 through L6, wherein L1 contains closely related semantic terms and each subsequent level represents increasingly abstract groupings”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 3,10,17, further elaborates the instructions to assign weighted taxonomic values further comprising instructions to:
apply higher weights to relationships found at lower taxonomic levels indicating greater semantic closeness; and
apply lower weights to relationships found at higher taxonomic levels indicating more abstract relationships”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 4,11,18, further elaborates the instructions to generate co-occurrence statistics further comprising instructions to:
analyze co-occurrences of term senses at a selected taxonomic level relative to other terms;
generate statistics of the co-occurrences; and
use the statistics to populate a co-occurrence matrix”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 5,12,19, further elaborates the memory further comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
calculate information values for terms based on:part-of-speech weights;
polysemy count weights indicating relative information value based on number of different meanings;
semantic co-syntactic class weights; and grammatical function weights”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Furthermore “calculate information values”, i.e., other than reciting “by a processor”, general-purpose computing, nothing in the claim element precludes the step from practically being performed in the mind. Consistent with the specification as at para 0119-0120, 0128, one can mentally calculate information value(s) because parity , in general, calculate values, while count indicating relation information value in the context of this claim limitation encompasses the user manually supplying count weight values covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “mental processes”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 6,13,20, further elaborates the instructions to select most probable term meanings further comprising instructions to :
apply a decision table that weights:
taxonomic relationship values;
co-occurrence statistics; and
frequency-based probable meanings”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Claim 7,14, further elaborates “the instructions to generate preliminary scope concepts further comprising instructions to: combine selected term meanings based on their information values to create concept vectors representing semantic profiles of claim portions”, which have been determined to be extra-solution activity that does not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05(b)(I). Even in combination, the additional details recited in these claims do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 of US Application No. 19/221,503are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,339,880. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims perform the same steps as the claims in the instant application.
Instant US application: 19/221,503
US Patent No. 12,339,880
Claim 1, A system for automated patent claim analysis, comprising:
at least one processor; and
memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
receive a first set of patent claims;
generate a moving analysis window of a configurable size that encompasses a selected number of terms;
for each position of the moving analysis window:
determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels;
assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights;
generate co-occurrence statistics for term senses at selected taxonomic levels;
select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics;
generate preliminary scope concepts based on the selected most probable term meanings; and
display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims.
Claim 1, A computer-implemented method comprising:
obtaining, into a computer, text of a first patent from an electronic file;
automatically finding and extracting, using the computer, claim text from the text of the first patent;
identifying, using the computer, text of a first plurality of claims from the claim text of the first patent;
displaying in a first area on a computer monitor the text of the first plurality of claims;
identifying key phrases from the text of the first plurality of claims using a specialized technical thesaurus;
creating an index token for each key phrase;
inserting the index token for each key phrase into the text of the first plurality of claims;
automatically generating, using index tokens from the first plurality of claims, text of a plurality of preliminary scope-concept phrases derived from key phrases associated with the index tokens, wherein the plurality of preliminary scope-concept phrases includes a first preliminary scope-concept phrase and a second preliminary scope-concept phrase;
receiving product description text, wherein the product description text describes a product;
automatically classifying a first subset of the product description text as trivial text and classifying a second remaining subset of the product description text as non-trivial text;
identifying occurrences of the first preliminary scope-concept phrase and the second preliminary scope-concept phrase in the non-trivial text;
determining an amount of the non-trivial text covered by the first preliminary scope-concept phrase and the second preliminary scope-concept phrase based on the occurrences;
displaying in a second area on the computer monitor the text of at least the first and second preliminary scope-concept phrases from the first plurality of claims and a graphical representation of the amount of the non-trivial text covered by the first preliminary scope-concept phrase and the second preliminary scope-concept phrase;
eliciting and receiving user input to select a first specified one of the displayed preliminary scope-concept phrases;
highlighting each occurrence of the first specified one of the displayed preliminary scope-concept phrases in a plurality of the first plurality of claims displayed in the first area that contain the first specified one of the plurality of preliminary scope-concept phrases;
eliciting and receiving user input to modify the first one of the displayed preliminary scope-concept phrases to generate text of a modified first scope-concept;
presenting a raw claim map and an improved claim map based on user input that distills preliminary scope-concept phrases into scope concepts including the modified first scope-concept; and
highlighting, in the first plurality of claims displayed in the first area, the scope concepts derived from the preliminary scope-concept phrases including each occurrence of the text of the modified first scope-concept.
.
It would have been obvious to a person of ordinary skill was made to modify and/or to omit the additional elements of claim 1-15 of U.S. Patent No. 12,339,880 to arrive at the claim 1 of the instant application 19/221,503 because the ordinary skilled person would have realized that the remaining element(s) would perform the same function as before and the only difference particularly claim 1 instant application 19/221,503 generate preliminary scope concepts based on the selected most probable term meanings, while claim 1 of U.S. Patent No. 12,339,880, determining an amount of the non-trivial text covered by the first preliminary scope-concept phrase and the second preliminary scope-concept phrase based on the occurrences, is absent of the limitation from instant application 19/221,503 claim 1, Omission and/or addition of elements and its function in combination is obvious expedient if the remaining elements perform same functions as before
Claim 1 of US Application No. 19/221,503 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,714,839. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims perform the same steps as the claims in the instant application.
Instant US application: 19/221,503
US Patent No. 11,714,839
Claim 1, A system for automated patent claim analysis, comprising:
at least one processor; and
memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
receive a first set of patent claims;
generate a moving analysis window of a configurable size that encompasses a selected number of terms;
for each position of the moving analysis window:
determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels;
assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights;
generate co-occurrence statistics for term senses at selected taxonomic levels;
select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics;
generate preliminary scope concepts based on the selected most probable term meanings; and
display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims.
Claim 1, receiving a textual representation of a set of patent claims;
processing word-by-word through each claim of the set of patent claims to identify sequences of words as a scope-concept phrase;
adding each scope-concept phrase to a set of scope-concept phrases;
identifying synonymous words from a thesaurus for words from each scope-concept phrase of the set of scope-concept phrases;
generating additional scope-concept phrases using the identified synonymous words;
adding the additional scope-concept phrases to the set of scope-concept phrases;
receiving product description text, wherein the product description text describes a product;
automatically classifying a first subset of the product description text as trivial text and classifying a second remaining subset of the product description text as non-trivial text;
identifying occurrences of each scope-concept phrase from the set of scope-concept phrases in the non-trivial text;
determining an amount of the non-trivial text covered by each scope concept-phrase of the set of scope-concept phrases based on the occurrences; and
displaying a graphical representation of the amount of the non-trivial text covered by each scope-concept phrase of the set of scope-concept phrases
.
It would have been obvious to a person of ordinary skill was made to modify and/or to omit the additional elements of claim 1-15 of U.S. Patent No. 11,714,839 to arrive at the claim 1 of the instant application 19/221,503 because the ordinary skilled person would have realized that the remaining element(s) would perform the same function as before and the only difference particularly claim 1 instant application 19/221,503 generate preliminary scope concepts based on the selected most probable term meanings, while claim 1 of U.S. Patent No. 11,714,839, generating additional scope-concept phrases using the identified synonymous words; adding the additional scope-concept phrases to the set of scope-concept phrases, is absent of the limitation from instant application 19/221,503 claim 1, Omission and/or addition of elements and its function in combination is obvious expedient if the remaining elements perform same functions as before
Claim 1 of US Application No. 19/221,503 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,885,078. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims perform the same steps as the claims in the instant application
Instant US application: 19/221,503
US Patent No. 10,885,078
Claim 1, A system for automated patent claim analysis, comprising:
at least one processor; and
memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
receive a first set of patent claims;
generate a moving analysis window of a configurable size that encompasses a selected number of terms;
for each position of the moving analysis window:
determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels;
assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights;
generate co-occurrence statistics for term senses at selected taxonomic levels;
select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics;
generate preliminary scope concepts based on the selected most probable term meanings; and
display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims.
highlighting each occurrence of the first specified one of the displayed preliminary scope-concept phrases in a plurality of the first plurality of claims displayed in the first area that contain the first specified one of the pluralities of preliminary scope-concept phrases.
Claim 1, extracting claim text from a textual representation of a patent;
identifying, as a set of claims, text of each claim from the claim text;
identifying a set of scope-concept phrases from the set of claims, wherein identifying the set of scope concept phrases includes:
processing word-by-word through a first claim from the set of claims to identify a plurality of claims from the set of claims having a first word, as a first one-word scope-concept phrase, from the first claim, identify a plurality of claims from the set of claims having a second word, as a second one-word scope-concept phrase, from the first claim, and repeating identification for each of a plurality of other words in the first claim;
processing word-by-word through the first claim to identify a plurality of claims from the set of claims having a first two-word sequence of words including the first word and the second word, as a first two-word scope-concept phrase, from the first claim, identify a plurality of claims from the set of claims having a second two-word sequence of words including the second word and a third word, as a second two-word scope-concept phrase, from the first claim, and repeating identification for each of a plurality of other two-word sequences of words in the first claim;
processing word-by-word through the first claim for three-word sequences of words to identify three-word scope-concept phrases; and
repeating above processes, starting with a second claim from the set of claims, for one-word, two-word, and three-word scope-concept phrases;
accessing an online thesaurus;
identifying synonymous words from the online thesaurus for the words of each scope concept phrase of the set of scope concept phrases;
generating additional scope concept phrases using the identified synonymous words;
adding the additional scope concept phrases to the set of scope concept phrases;
automatically classifying a first subset of the text of the set of claims as trivial text and classifying a second remaining subset of the text that as non-trivial text;
evaluating how much of the non-trivial text has been covered by each scope concept phrase of the set of scope concept phrases; and
displaying a graphical representation of how much of the non-trivial text has been covered by each scope concept phrase of the set of scope concept phrases
.
It would have been obvious to a person of ordinary skill was made to modify and/or to omit the additional elements of claim 1-15 of U.S. Patent No. 10,885,078 to arrive at the claim 1 of the instant application 19/221,503 because the ordinary skilled person would have realized that the remaining element(s) would perform the same function as before and the only difference particularly claim 1 instant application 19/221,503 generate preliminary scope concepts based on the selected most probable term meanings, while claim 1 of U.S. Patent No. 10,885,078, generating additional scope concept phrases using the identified synonymous words, is absent of the limitation from instant application 19/221,503 claim 1, Omission and/or addition of elements and its function in combination is obvious expedient if the remaining elements perform same functions as before.
Claim 1 of US Application No. 19/221,503 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 9,904,726. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims perform the same steps as the claims in the instant application.
Instant US application: 19/221,503
US Patent No. 9,904,726
A system for automated patent claim analysis, comprising:
at least one processor; and
memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to:
receive a first set of patent claims;
generate a moving analysis window of a configurable size that encompasses a selected number of terms;
for each position of the moving analysis window:
determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels;
assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights;
generate co-occurrence statistics for term senses at selected taxonomic levels;
select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics;
generate preliminary scope concepts based on the selected most probable term meanings; and
display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims.
Claim 1, obtaining, into a computer, text of a first patent;
automatically finding and extracting, using the computer, claim text from the text of the first patent;
identifying, using the computer, text of a first plurality of claims from the claim text of the first patent;
displaying in a first area on a computer monitor the text of the first plurality of claims;
automatically generating, from the first plurality of claims, text of a plurality of preliminary scope-concept phrases derived from the first plurality of claims, wherein the plurality of preliminary scope-concept phrases includes a first preliminary scope-concept phrase and a second preliminary scope-concept phrase;
displaying in a second area on the computer monitor the text of least the first and second preliminary scope-concept phrases from the first plurality of claims;
eliciting and receiving user input to select a first specified one of the displayed preliminary scope-concepts phrases; and
highlighting each occurrence of the first specified one of the displayed preliminary scope-concept phases in a plurality of the first plurality of claims displayed in the first area that contain the first specified one of the plurality of preliminary scope-concept phrases;
wherein the generating of the plurality of preliminary scope-concept phrases further includes:
first-processing word-by-word through a first selected claim, and for a first selected word in the first claim identifying a plurality of other claims having that first selected word, thus identifying a first one-word preliminary scope-concept phrase, for a second selected word in the first selected claim identifying a plurality of other claims having that second selected word, thus identifying a second one-word preliminary scope-concept phrase, and repeating this first processing for each of a plurality of words in the first selected claim;
second processing word-by-word through the first selected claim, and for a first selected two-word sequence of words consisting of the first selected word and the second selected word of the first selected claim, identifying a plurality of other claims having that first selected two-word sequence, thus identifying a first two-word preliminary scope-concept phrase, for a second two-word sequence of words consisting of the second selected word and a third selected word of the first selected claim, identifying a plurality of other claims having that second selected two-word sequence, thus identifying a second two-word preliminary scope-concept phrase, and repeating this second processing for a plurality of other two-word sequences of words in the first selected claim;
third processing word-by-word through the first selected claim for selected three-word sequences of words; and
repeating the above processes, starting with a second selected claim, for one-word, two-word, and three-word preliminary scope-concept phrases
It would have been obvious to a person of ordinary skill was made to modify and/or to omit the additional elements of claim 1-24 of U.S. Patent No. 9,904,726 to arrive at the claim 1 of the instant application 19/221,503 because the ordinary skilled person would have realized that the remaining element(s) would perform the same function as before and the only difference particularly claim 1 instant application 19/221,503 generate preliminary scope concepts based on the selected most probable term meanings, while claim 1 of U.S. Patent No. 9,904,726, automatically generating, from the first plurality of claims, text of a plurality of preliminary scope-concept phrases derived from the first plurality of claims, wherein the plurality of preliminary scope-concept phrases includes a first preliminary scope-concept phrase and a second preliminary scope-concept phrase, is absent of the limitation from instant application 119/221,503 claim 1, Omission and/or addition of elements and its function in combination is obvious expedient if the remaining elements perform same functions as before.
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.
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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al., (hereafter Scott), US Pub. No. 2007/0073678 published Mar, 2007 in view of Poltorak, US Pub. No. 2010/0005094 published Jan 2010
As to Claim 1,8,15, Scott teaches a system which including “a system for automated patent claim analysis, comprising: (Poltorak: Abstract, fig 2,0024 – Poltorak teaches automatically selecting claim ie., identifying claim to be analyzed)
“at least one processor” (Scott: fig 26,0118); and
“memory comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to” (Scott: fig 26, 0118):
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“generate a moving analysis window of a configurable size that encompasses a selected number of terms” (Scott: 0012, 0019,0107, fig 18 – Scott teaches semantic terms and respective weights assigned to the relations that including moving window based on both terms and configurable size);
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“for each position of the moving analysis window” (Scott: fig 18, 0028,0090 – Scott teaches moving window, including semantic closeness and position of the words);
“determine taxonomic relationships between different senses of terms within the moving analysis window at multiple hierarchical levels” (Scott: 0012,0015,0019,0028-0029,0087, fig 1 – Scott teaches semantic taxonomy particularly taxonomic relationships between different senses based on the level(s) that including taxonomic structure having seven levels for example levels L0-L6
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“assign weighted taxonomic values to the taxonomic relationships based on hierarchical level, wherein lower hierarchical levels receive higher weights” (Scott: 0030-0031, 0089, fig 6, – Scott teaches taxonomic relationships defining weighting scheme, while weight values for each taxonomic level with respective values) ;
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“generate co-occurrence statistics for term senses at selected taxonomic levels” (Scott: fig 13, 0094-0096, 0169-0170 – Scott teaches generating , analyzing text phrases particularly co-occurrences are analyzed based on taxonomic level, further maintains co-occurrence statistics and their relevance weight)
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“select most probable term meanings based on a combination of the weighted taxonomic values and co-occurrence statistics”” (Scott: fig 19-21, 0108-0110 – Scott teaches co-occurrence statistics for each level of the taxonomy with respected weighted values);
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“generate preliminary scope concepts based on the selected most probable term meanings” (Scott: 0025-0026, 0087,0127-0128 – Scott teaches taxonomic hierarchy having multiple levels representing group of terms are closely related semantically particularly concepts convey the terms, their semantic relatedness to the terms defines scope concepts and their respective meaning); and
“display the preliminary scope concepts with interactive visual indicators showing conceptual relationships between claims” (Scott: 0113,0117, fig 22-23 – Scott teaches summarizing of the scope concepts that including semantic relationship between words and respective weights).
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It is however, noted that Scott does not disclose “automated patent claim analysis, “receiving a first set of claims”, although Scott teaches features of semantic word analysis (fig 2, fig 4, 0069,0071). On the other hand, Poltorak disclosed automated patent claim analysis, comprising: (Poltorak: Abstract, fig 2,0024 – Poltorak teaches automatically selecting claim i.e., identifying claim to be analyzed), “receiving a first set of claims” (Poltorak: fig 2, 0024 – Poltorak teaches user input identifying the claim(s) to be analyzed, particularly retrieving patent documents stored in the database)
It would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention analyzing patent claims including validity of the claims from the patent documents of Poltorak into analyzing semantic documents particularly plurality of phrases and/or terms of Scott et al., because that would have allowed users of Scott to identify plurality of words in the patent claim to obtain the frequencies of occurrences associated with the phrases and/words, thereby improves the response, performing number of steps to analyze validity documents (Poltorak: 0007-0008), thus improves overall quality and reliability of the data processing system particularly analyzing validity of the patent claims (Poltorak: 0008)
As to Claim 2,9,16, the combination of Scott, Toltorak disclosed:
“analyze relationships between senses at multiple levels from L1 through L6, wherein L1 contains closely related semantic terms and each subsequent level represents increasingly abstract groupings” (Scott: fig 19-21, 0108-0110).
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As to Claim 3,10,17, the combination of Scott, Toltorak disclosed:
“apply higher weights to relationships found at lower taxonomic levels indicating greater semantic closeness” (Scott: 0012; 0019,0028)and
“apply lower weights to relationships found at higher taxonomic levels indicating more abstract relationships” (Scott: 0012,0019, 0028,0089).
As to Claim 4,11,18, the combination of Scott, Toltorak disclosed:
“analyze co-occurrences of term senses at a selected taxonomic level relative to other terms” (Scott: 0093-0095);
generate statistics of the co-occurrences” (fig 13, 0094-0096, 0169-0170);
and
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“use the statistics to populate a co-occurrence matrix” (Scott: fig 5, 0106-0108).
As to Claim 5,12,19, the combination of Scott, Toltorak disclosed:
the memory further comprising instructions that, when executed by the at least one processor, cause the at least one processor to perform operations to: (Scott: fig 26,0118)
“calculate information values for terms based on:part-of-speech weights” (Scott: Abstract, fig 2-3, 0016-0017,0069-0070,0073-0074);
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polysemy count weights indicating relative information value based on number of different meanings” (Scott: fig 18, 0107-0108);
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semantic co-syntactic class weights; and grammatical function weights” (Scott: fig 2-3,0022-0024).
As to Claim 6,13,20, the combination of Scott, Toltorak disclosed:
“apply a decision table that weights” (Scott: fig 10):
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taxonomic relationship values (Scott: 0022-0023,0030-0031);
“co-occurrence statistics” (Scott: fig 13); and
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“frequency-based probable meanings” (Scott: fig 5, 0096,0142).
As to Claim 7,14, the combination of Scott, Toltorak disclosed: “combine selected term meanings based on their information values to create concept vectors representing semantic profiles of claim portions” (Scott: 0104-0105).
Conclusion
The prior art made of record
a. US Pub. No. 2007/0073678
b. US Pub. No. 2010/0005094
Examiner's Note: Examiner has cited particular columns and line numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
SEE MPEP 2141.02 [R-5] VI. PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984) In re Fulton, 391 F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004). >See also MPEP §2123.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record, listed on form PTO-892, and not relied upon, if any, is considered pertinent to applicant's disclosure
Authorization for Internet Communications
The examiner encourages Applicant to submit an authorization to communicate with the examiner via the Internet by making the following statement (from MPEP 502.03):
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Please note that the above statement can only be submitted via Central Fax (not Examiner's Fax), Regular postal mail, or EFS Web using PTO/SB/439.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Srirama Channavajjala whose telephone number is 571-272-4108. The examiner can normally be reached on Monday-Friday from 8:00 AM to 5:30 PM Eastern Time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gorney, Boris, can be reached on (571) 270- 5626. The fax phone numbers for the organization where the application or proceeding is assigned is 571-273-8300 Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free)
/Srirama Channavajjala/Primary Examiner, Art Unit 2154
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