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 .
Applicant’s Reply
Applicant's response of 08/06/26 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-3, 5-7 are pending.
With respect to the applicant’s interview summary filed 08/27/26, it has been entered into the record. The examiner notes that the person signing the summary of the interview did not actually participate in the interview.
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 1-3, 5-7, are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite an apparatus and a method and a non-transitory computer readable tangible recording medium; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of providing intellectual property related information to a user that relates to person in charge information for applications being examined by the person in charge.
Using claim 1 as a representative example that is applicable to claims 6, 7, the abstract idea is defined by the elements of:
receive[s] person-in-charge information for specifying a person in charge who has performed examination of an application relating to an intellectual property right for which a notice of rejection has been received, or identification information for specifying the application relating to the intellectual property right for which the notice of rejection has been received,
extracts the person-in-charge information for specifying the person in charge who has performed examination of the application relating to the intellectual property right for which the notice of rejection has been received based on the identification information in a case where the identification information has been received, and
extracts past applications for which the person in charge has performed examination based on the person-in-charge information
identifies as a specific application, a past application that has been granted only by argument without amendment or correction of translation errors in response to a notice of reasons for rejection immediately before the grant among the past applications
acquires argument case information related to the specific application, and
outputs the argument case information, and
the argument case information includes at least one piece of information of past identification information including at least one of an application number, a publication number, or a patent number, argument information, withdrawn reasons for rejection information, or link information to information in which progress information of the past applications is accessible
The above limitations are reciting a process where a person in charge of examining an application is identified and case information is generated for the user for matters such as the examination of an intellectual property application. The claimed invention is akin to a user obtaining information about patent examiners and the applications they work on by searching for the office actions issued by the examiners that sets forth the reasons for rejection of claims for responses that result in an allowed application. The claimed steps are all functions that can be performed by people with no technology at all. The providing of information that relates to a person in charge who is examining an application is considered to be a legal interaction type of abstract idea that is receiving, storing, and analyzing office actions from patent offices and patent examiners to provide information to interested parties. This is claiming a certain method of organizing human activities type of abstract idea.
For claims 1, 6, the additional elements of the claim is the recitation to the processor that is executing the claimed steps that have been found to be defining the abstract idea. Claim 7 recites the non-transitory computer readable medium that is storing a program to cause the steps to occur. These elements are reciting that the abstract idea is to be implemented by use of a computer with a processor.
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected which is a link to computer technology, also see MPEP 2106.05(h). This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination with the claim as a whole because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor to perform steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected which is a link to computer technology, also see MPEP 2106.05(h). This does not amount to the claim reciting significantly more than the abstract idea. The claims 1, 6, 7, do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 2, 3, 5, the claims are reciting a further embellishment of the same abstract idea that was found for claim 1. Claiming the information such as an application number of argument information, claiming that a summary of the argument is generated, outputting the case information, and specifying the application as claimed are all elements that are part of the abstract idea. The claims do not recite any further additional elements for consideration other than the processor of claim 1, where the processor has been treated in the same manner that was set forth for claim 1, see MPEP 2106.05(f), (h). The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
Therefore, for the above reasons, claims 1-3, 5-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea 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, 2, 5-7, is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt et al. (20080021900)
For claims 1, 5, 6, 7, Holt discloses a computerized system and method for obtaining and storing intellectual property related data for applications that are being examined by a patent office, such as for patent applications filed with the USPTO. Disclosed is an examiner information system 100 (satisfies the claimed processor) that is used to aggregate information about patent applications that are worked on by examiners who are in charge of the examination for an IP application. Person in charge information is received as claimed, which is the receipt of information from a patent office that identifies an examiner, the prosecution history of applications and the office actions and responses, etc., see paragraphs 017-020, 023. Examiner name (person in charge) is one piece of information that is obtained and used by the system. Data about patent applications is received and the data is analyzed to extract information such as the name of the examiner that is in charge of examining a given application. This satisfies the claimed receiving and extracting step for the person in charge information.
Holt teaches that a user can perform a search to identify a specific patent examiner that is in charge of patent examination. See paragraph 028, 035, 039, 046, as examples. Holt teaches that the user can search office actions for a specific patent examiner, can search for specific rejections made during prosecution, and can search for responses to those office actions that were found to be successful and that have overcome the rejections. This satisfies the claimed extracting of past applications for which a person in charge has performed examination based on the person in charge information. For example, see figure 14 that shows how a user can search a specific examiner and their docket for those applications that have certain rejections and that have had responses filed that were found to have overcome the rejections. Paragraph 052 and 058 both disclose how the system can allow a user to search for responses to office actions that eventually overcame the rejections or that were found to be successful in obtain a patent. This satisfies the claimed acquiring of argument case information and outputting the argument case information that includes an application number, argument information, and the claimed withdrawn reasons for rejection information. All of this information is identified in Holt even though the claim only requires one due to “at least one”. See paragraph 065 that teaches the ability to search a specific examiner for specific rejections and to search for those responses that are successful. Figure 10 also shows this concept for the box labeled “That were eventually overcome” for responses that overcame a rejection.
Not explicitly disclosed by Holt is that the past application has been granted only after argument with no amendment. This is claiming the searching for a response to an office action that only traverses the rejections with no amendment to the claims. In a reply to an office action, pending claim(s) are amended with arguments or claims are not amended and the applicant only traverses the rejections, those are the only two possibilities that could exist. It is a common situation at the USPTO for an applicant not amend claims in a response. Holt teaches that past applications of a given examiner that contains rejections are identified, and that within those applications the system can identify those responses that were successful in overcoming a rejection. While Holt does not specifically disclose that the situation includes responses with no amendment, this situation is entirely possible in patent prosecution. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Holt with the ability to retrieve patent applications from a specific patent examiner that had rejections in an office action and that were found to have been overcome by a response to the office action that did not include amendments. A traversal of a rejection without amendment to the underlying claim is not uncommon in patent prosecution and one of ordinary skill in the art who is using Holt to find responses to rejections from a patent examiner that were successful in overcoming the rejections would want to know about responses that only contained a traversal. This would have been obvious because it allows a user to search for responses that overcome rejections of an office action without amendment so that the current user can consider arguing the same thing to the same examiner in an effort to avoid amending the claims. This would have been obvious to one of ordinary skill in the art and would yield predictable results of allowing a user to obtain more insight into the decision maker (the patent examiner).
For claim 2, Holt discloses information such as application number, see paragraph 023. Holt receives and stores information such as examiner name and/or application number.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Holt et al. (20080021900) in view of Deibler et al. (20210192125).
For claim 3, not disclosed is that the processor creates a summary of argument from the argument information. This has been interpreted as being the summarization of a document such as an office action from the USPTO.
Deibler discloses a system and method for summarizing a document. Deibler discloses that the system includes a summarization model that is used to summarize a document, with disclosure to summarizing a legal document found in paragraph 133. As is taught by Deibler in paragraph 004, the ability to summarize information such as a document is of utmost importance to users that work with different types of documents.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Holt with the ability to summarize legal documents as taught by Deibler, for the documents in Holt that are involved in the prosecution of a patent application, such as office actions and other prosecution related documents. This teaching from Deibler that is being provided to Holt will provide for the ability to allow a user to receive a summary of an office action as opposed to having to read it in its entirety. This would have been obvious to provide to Holt yields the predictable result of providing a user in holt with a summary of documents stored by the system.
Response to arguments
The traversal of the prior art rejection in view of Holt is considered to be moot based on the new grounds of rejection that is applied to the pending claims in view of the amendment to the claims. The current rejection of record addresses the amendment to the claims and moots the arguments from the applicant.
The 112b rejections have been withdrawn in view of the amendment to the claims.
The traversal of the 35 USC 101 rejection is not persuasive. The applicant argues that the claims recite specific steps that provide an advantageous effect of obtaining case information for determining a course of how to respond to a procedure for acquiring a right, and that a specific algorithm is claimed that is not more than computer implementation. This is a general allegation that is not persuasive. Obviously the claims recite specific steps in the form of the abstract idea, which is the argued algorithm. The advantage of being able to obtain information on a given application (IP right) is arguing the abstract idea. The applicant has not identified any additional elements with an explanation as to how or why they render the claims eligible. The 35 USC 101 rejection is being maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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, Jessica Lemieux can be reached at 5712703445. 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.
/DENNIS W RUHL/Primary Examiner, Art Unit 3626
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