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 .
This Office Action is responsive to communication filed on 08/17/2026.
Claims 1 – 20 are currently pending.
Terminal Disclaimer
The terminal disclaimer filed on 08/17/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 12,248,504 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
Claims 1 – 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The omitted structural cooperative relationships are: in independent claims 1, 15, and 19, the Applicant claims “wherein each of the one or more clusters is assigned a weight”. However, there’s no relationship or connection between this “weight” to other limitations of the claims.
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.
Step 1:
Claims 1 - 20 are directed to “a method, a system, computer readable storage media”, and therefore, directed to a statutory category.
Step 2A, Prong One:
The independent claims 1, 15, 19 include the following limitations that directed to an abstract
idea:
“train, based on grouping a plurality of documents into one or more clusters, a machine learning model to determine a related document from a plurality of candidate documents based on an attribute for an input document, wherein each of the one or more clusters is assigned a weight”, as drafted, recites a mentally process as an evaluation or judgement. A human would group items into clusters, assign weights, and analyze attributes using pen and paper or in human mind. Such operations is categorized as mathematical and statistical concepts. Organizing or classifying documents based on attributes is an activity that can be (and historically has been) performed by humans, even if a machine learning model does it faster on a larger scale. See court case Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. April 2025): The court declared that patents doing nothing more than applying generic machine learning to new data environments, without disclosing improvements to the underlying machine learning models, are patent-ineligible. Functions like "iterative training" are inherent to AI and do not save a patent if the application uses standard software on generic hardware.
“determine the related document from a plurality of candidate documents based on providing the trained machine learning model the attribute for the input document”, as drafted, recites a mentally process as an evaluation or judgement. One can mentally judge related/similarity document from an attribute of an input document. Comparing document attributes (e.g., tags, authors, keywords) to identify relationships is a task that has historically been done manually by humans. Nothing in the claim element precludes the step from practically being performed in the mind. This is also consistent as in Para. 0087 - 0089 of the Disclosure, where one can mentally determine an attribute of input document and determine the similarity between the attribute and candidate documents.
“determine one or more common field values for a common field based on the related document, wherein the common field includes a common field classification associated with the input document and the related document” as drafted, recites a mentally process as an evaluation or judgement. One can mentally judge related/similarity document from an attribute of an input document. Using a "common field" (like a topic, classification code, or field name) to relate documents is a fundamental business practice or mental process, similar to comparing an input document metadata to a database to find matching “common field”. This is also consistent as in Para. 0095 of the Disclosure, where one can mentally determine an attribute of input document and “comparing tag/prompt combinations of fields in the input document and fields in the related documents”.
“automatically populate, based on the one or more common field values, a field value for a field of one or more of the input document or the related document, wherein the field includes the common field classification” as drafted, recites a mentally process as an evaluation or judgement. One can mentally perform setting a value for the “common field” of a document after observing the data. The claim describes taking information from one place (a common field), identifying a match (common field classification), and copying or moving that information to another place (populating a field in an input or related document). This is a routine task that a human could do with paper documents such as looking at two files, finding a matching account number, and filling in a blank line based on that match. Doing this "automatically" via a computer does not change its fundamental, abstract nature. This is also consistent as in Para. 0098 of the Disclosure, where one can mentally “determine common filed values by comparing prompts and corresponding tags of at least two related documents”. See Electric Power Group, LLC v. Alstom S.A. (Fed. Cir. 2016): The Federal Circuit established that gathering, analyzing, and displaying information is an inherent abstract idea.
Step 2A, Prong Two:
The claim recites the following additional elements:
The system includes a storage device, processors, instruction to perform the method, and a computer readable storage media, which is a high-level recitation of a generic computer components and represents mere instructions to apply on a computer as in MPEP 2106.05(f), which does not provide integration into a practical application.
The additional limitations, individually or in combination, do not integrated the abstract idea into a practical application, even viewing the claims as a whole, because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
In this case, the “a storage device, processors, instruction to perform the method, and a computer readable storage media” is identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II), "i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); "computer-implemented" and performed by "one or more processors", a system includes memory storing instruction coupled to a processor, a "non-transitory computer readable medium processors are considered insignificant extra- solution activity, and do not take the claim limitations out of the mental processes grouping. See MPEP - 2106.05(g) ("whether the limitation is significant").
Accordingly, the additional limitations are not providing significantly more than the
judicial exception. Looking at the claim as a whole does not change this conclusion and
therefore, the claim is ineligible.
Claims 1 – 14, 19 - 20, Applicant claims the abstract idea on a non-transitory computer
readable medium with instructions and processor to carry-out the method as in claim 15,
without adding further limitations that amount to more than generally linking the use of
the exception to a particular technological environment. Generic computer components
recited as performing generic computer functions that are well-understood, routine and
conventional activities amount to no more than implementing the abstract idea with a
computerized system. The use of generic computer components to "determine common filed and setting value" do not impose any meaningful limit on the computer implementation of the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the
above-identified judicial exception (the abstract idea).
The dependent claim 2 - 3, 16 – 18, 20 include “generate a container comprising the input document and the related document; update the container to include the common field; add, based on a determination that an electronic document is related to at least one document stored in the container, the electronic document to the container; and based on the electronic document being added to the container and a determination that a field classification for a field of the electronic document corresponds to the common field classification for the common field, set a field value for the field of the electronic document to the one or more common field values for the common field”, and “generate data for a graphical user interface, the data comprising an indication of the related document; output, for display, the data to a user device; receive, from the user device, an indication of a selection indicating the related document; and generate, based on the indication of the selection, the container to include the input document and the related document” as drafted this recites a mentally performable process as an evaluation or judgement. Collecting, classifying, and organizing electronic documents (e.g., creating a "container") and mapping fields are tasks that can be performed mentally or with basic human organization. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 4, include “generate data for a graphical user interface, the data comprising an indication of at least the common field; output, for display, the data to a user device; receive, from the user device, a signal indicating a new common field value for the common field; and update the one or more common field values of the common field to the new common field value based on the signal received from the user device.”, are identified as insignificant extra-solution activity above when re-evaluated these elements are well-understood, routine, and conventional as evidenced by the court cases in MPEP 2106.05(d)(II).
The dependent claims 5, include “wherein to determine the related document from the plurality of the candidate documents, the processing circuitry is configured to: generate, based on the attribute for an input document, similarity scores for each of the plurality of candidate documents; generate an ordered list of the plurality of candidate documents based on the similarity scores generated for each of the plurality of candidate documents; and determine a subset of documents from the plurality of the candidate documents based on one or more thresholds associated with the ordered list, wherein the subset of documents includes the related document”, as drafted this recites a mentally performable process as an evaluation or judgement. Collecting, classifying, and organizing electronic documents (e.g., creating a "container") and mapping fields are tasks that can be performed mentally or with basic human organization. Under its broadest reasonable interpretation when read in light of the specification, this limitation is recited at a high level of generality, can be performed by human mind, which is a form of metal activity. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 6, include “wherein to determine the one or more common field values for the common field the processing circuitry is configured to: based on a determination that a field classification for a first field of the input document corresponds to a field classification for a second field of the related document, generate the common field to include the one or more common field values as one or more of a first field value of the first field or a second field value of the second field, and to include the common field classification as the field classification of the first field or the second field” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 7 - 8, include “obtain the input document from a user device, wherein the input document is accessible to a user account associated with the user device, and wherein the plurality of candidate documents are accessible to the user account”, and “wherein the processing circuitry is configured to determine the attribute for the input document responsive to obtaining the input document”, as drafted this recites a mentally performable process as an evaluation or judgement. Merely receiving, gathering, or accessing data (like an input document) that is already available to a user account is viewed as a foundational, abstract concept rather than a technological invention. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 9 - 10, include “provide a machine learning model with a plurality of synthetic documents; train the machine learning model with the plurality of synthetic documents by grouping the plurality of synthetic documents into clusters with ensemble clustering; provide the attribute as an input to the machine learning model; generate a similarity score for each of the plurality of candidate documents; and determine the related document based on the similarity scores generated for each of the plurality of candidate documents” as drafted this recites a mentally performable process as an evaluation or judgement. The steps like "generating a similarity score" and "determining a related document" are typical of organizing information, which courts view as a mental process. According to the USPTO 2024 AI Guidance, "training" a model is considered incident to the nature of machine learning, and may be seen as a conventional application of algorithms.
The dependent claims 11, include “wherein the processing circuitry is further configured to determine the attribute for the input document based on content of the input document”, as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 12, include “wherein the processing circuitry is further configured to obtain an envelope comprising the input document and the attribute for the input document” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 13, include “wherein an envelope comprises the input document and an indication of a subject of the input document, and wherein the processing circuitry is further configured to determine the attribute based on the subject of the input document” as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
The dependent claims 14, include “wherein an envelope comprises the input document and an indication associated with the common field classification, and wherein the processing circuitry is further configured to determine the attribute based on the indication of the common field classification of the envelope”, as drafted this recites a mentally performable process as an evaluation or judgement. See MPEP 2106.04(a)(2), subsection III.
Response to Arguments
Applicant's arguments filed 08/17/2026 regarding the rejection of claims 1- 20 under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues “Amended claim 1 does not recite a judicial exception under Eligibility Step 2A Prong 1 of the Subject Matter Eligibility Test of MPEP 2106. For instance, amended claim 1 at least reciting "train, based on grouping a plurality of documents into one or more clusters, a machine learning model to determine a related document from a plurality of candidate documents based on an attribute for an input document, wherein each of the one or more clusters is assigned a weight" cannot practically be performed in the human mind.” The Examiner respectfully disagrees.
As discussed above, a human would perform grouping items into clusters, assigning weights, and analyzing attributes using pen and paper or in human mind. Such operations are categorized as mathematical and statistical concepts or mental process. Organizing or classifying documents based on attributes is an activity that can be (and historically has been) performed by humans, even if a machine learning model does it faster on a larger scale. Applicant just applies an abstract idea on a “machine learning model” to perform a manual process. Using the trained machine learning model to “determine”, is considered insignificant extra- solution activity, and do not take the claim limitations out of the mental processes grouping. See MPEP - 2106.05(g) ("whether the limitation is significant"). Also See court case Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. April 2025): The court declared that patents doing nothing more than applying generic machine learning to new data environments, without disclosing improvements to the underlying machine learning models, are patent-ineligible. Functions like "iterative training" are inherent to AI and do not save a patent if the application uses standard software on generic hardware.
Applicant argues “Similar to Example 37 of the USPTO 2019 PEG Examples, amended claim 1 as a whole integrates any alleged mental process into a practical application… the additional elements of amended claim 1 recite a specific manner of determining a related document and automatically populating a field value based on training "a machine learning model to determine a related document from a plurality of candidate documents based on an attribute for an input document" "based on grouping a plurality of documents into one or more clusters," "wherein each of the one or more clusters is assigned a weight," which provides a specific improvement over prior systems, resulting in improved electronic document management.” The Examiner respectfully disagrees.
The Applicant only use “the machine learning model” to determine a related document from a plurality of candidate documents based on an attribute for an input document, which is merely using a generic computer as a tool to automate a mental or organizational task. The claim does not show how the machine learning and weighting algorithm specifically changes the inner workings of the computer or database technology (as opposed to just achieving a better business or data result). The act of “wherein each of the one or more clusters is assigned a weight” does not show connection to other limitation of the claim or does not show how this “weight” improves the database technology.
The following are some closest arts:
Stoica et al (U.S. 2017/0161375 A1) discloses a method and system for clustering documents based on textual content including the teaching of generate a signature for each document in the form of sequence of hashes (abstract). Further Stoica teaches store signature elements into fields and matching with other documents using signature, thereby clustering documents by matching signature (Fig. 2 of Stoica).
Coquard et al (U.S. 2020/0327172 A1) discloses a method, system for processing contract documents including the teaching of parsing documents to identify parameter(s) that correspond to a plurality of predetermined fields (Fig. 1 – 2, abstract of Coquard).
Conclusion
THIS ACTION IS MADE FINAL. 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 CAM LINH T NGUYEN whose telephone number is (571)272-4024. The examiner can normally be reached M-F: 7:00 - 3:00 pm.
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, Apu Mofiz can be reached at 571- 272- 402480. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAM LINH T NGUYEN/Primary Examiner, Art Unit 2161
