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 .
Status of Claims
This action is in reply to application 19/316,401 filed 9/2/2025. Claims 1, 6, 11, 13, 17, and 19 were amended, claims 5, 8-10, 15-16, 18, and 20 were cancelled, and claims 21-28 were newly added in the reply filed 9/23/2026. Claims 1-4, 6-7, 11-14, 17, 19, and 21-28 are pending. This action is final.
Response to Arguments
Regarding Applicant’s argument starting on page 34 regarding claims 1-20: Applicant’s arguments filed with respect to the rejections made under 35 USC § 101 have been fully considered, but are not persuasive.
Applicant first argues that the amended claims do not recite “Certain Methods of Organizing Human Activity.” Examiner respectfully disagrees. The abstract idea is specifically directed to “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations) because it is directed to the business relations between a software administrator, a patent applicant, and a patent examiner.
Applicant’s arguments with regard to mental processes are moot because the abstract idea was not categorized as “Mental Processes” by Examiner.
Applicant further argues that the claims recite a specific improvement in computer and artificial-intelligence technology. Examiner respectfully disagrees. The alleged improvements that Applicant’s invention provides are business improvements to a business related process, and not improvements to a computer system technology itself (See MPEP § 2106.04(d)(1) and 2106.05(a) for examples and description of what is considered an improvement to a computer-functionality or an improvement to a technology). "Identifying, analyzing, and presenting certain data to a user is not an improvement specific to computing." International Business Machines Corp. v. Zillow Group, Inc., (Fed. Cir. No. 2021-2350, Oct. 17, 2022, pg. 8). The claimed computer components are generic and broadly recited, and the alleged improvements are not to the generic computer components themselves, but to the abstract process being performed by the computer components. Examiner respectfully argues that the claimed limitations not analogous to the MPEP descriptions and examples of improvements to computer-functionality or improvements to a technology, and that the claims are directed to an abstract idea.
Examiner notes that the artificial intelligence features recited in the claims merely recite generic machine learning techniques described at a high level, and do not provide any improvement to these techniques. Instead, the claims are directed to improving the abstract idea by implementing the generic machine learning techniques such as continuous retraining. "[P]atents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101." Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025) (slip op. at 18). "Finally, the claimed methods are not rendered patent eligible by the fact that (using existing machine learning technology) they perform a task previously undertaken by humans with greater speed and efficiency than could previously be achieved." Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025), slip op. at 15. "[T]he only thing the claims disclose about the use of machine learning is that machine learning is used in a new environment." Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025), slip op. at 13. "The requirements that the machine learning model be 'iteratively trained' or dynamically adjusted in the Machine Learning Training patents do not represent a technological improvement." Recentive Analytics, Inc. v. Fox. Corp., Fed Cir. No. 2023-2437 (Apr. 18, 2025), slip op. at 12.
Applicant argues that the invention allows for processes to be performed more quickly than if they were performed without the computer system. This argument is not sufficient to traverse the rejections under 35 USC § 101, however. The improved speed in which a generic computer environment can perform a data analysis when compared to a manual or mental determination is already considered by the office in its determination that a generic computer environment comprises additional elements, but that those additional elements do not amount to significantly more than the abstract idea, nor do they integrate the abstract idea into a practical application. It is well-understood that generic computer environment can perform calculations more quickly than can be performed by the human mind, but this does not make any application utilizing a generic computer environment patent eligible under 35 USC § 101. Similar to many other applications utilizing generic computer environments, the current application merely uses a generic computer environment to “apply” the abstract idea, thus performing the abstract idea more quickly than if performed mentally or manually (see MPEP § 2106.05(f) for a detailed explanation of the USPTO’s view of such claims).
Applicant further argues that the previous office action does not identify factual support that the newly recited additional elements are well-understood, routine, and conventional. This argument is moot because Examiner need not show that the additional elements are well-understood, routine and conventional. Instead, Examiner may merely show that the additional elements comprise components of a generic computer environment, which Examiner has done.
Applicant further argues that since certain claim language is considered novel, those limitations should be considered patent eligible subject matter. This is not true, however. "The 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). "[U]nder the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Regarding Applicant’s argument starting on page 45 regarding claims 1-4, 6-7, 9, 11-12, 14-15, 17, and 19: Applicant’s arguments filed with respect to the rejections made under 35 USC § 103 have been fully considered, and are persuasive. All filed claims are now considered novel over the prior art.
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 1-4, 6-7, 11-14, 17, 19, and 21-28 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claim 1 recites a method of near-instant evaluation of a utility patent application, the method comprising: receiving, by an artificial intelligence (Al) engine, an electronic submission of the utility patent application including at least one claim, a specification, one or more figures, and any associated oath and declaration, wherein the AI engine comprises a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions and at least one model trained on software-related inventions, a plurality of domain-specific knowledge bases, a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, and a parallel and distributed computing context; classifying, using the natural language processing model, a technical field of the utility patent application from the specification and the one or more figures, and automatically selecting, based on the classified technical field, an appropriate model from the plurality of domain-specific models and an appropriate knowledge base from the plurality of domain-specific knowledge bases; interpreting, using the Al engine, each claim of the utility patent application by: parsing, using the natural language processing model and the selected appropriate model, the at least one claim into individual limitations and determining a scope and meaning of each claim term based on a context provided by the specification and domain-specific definitions from the selected appropriate knowledge base, mapping each limitation to corresponding disclosure within at least one of the specification and the one or more figures, determining whether intrinsic support exists in at least one of the specification and the figures for each limitation, and consulting at least one of a learned treatise and an authoritative reference in response to a determination that intrinsic support is insufficient; evaluating, using the Al engine, the selected appropriate model, and the selected appropriate knowledge base, statutory compliance of the utility patent application, including: adjudicating compliance with 35 U.S.C. §101 by confirming that the claimed subject matter pertains to statutory categories of patent-eligible subject matter in at least one of mechanical, electromechanical, chemical, electrical, pharmaceutical, consumer, and software domains, adjudicating compliance with 35 U.S.C. §112 by determining whether the specification provides adequate written description, enablement sufficient for a person of ordinary skill in the art to make and use the at least one claim and disclosure of the best mode of practicing the at least one claim, verifying consistency of figure numbering with corresponding textual descriptions in the specification, detecting antecedent basis errors within the at least one claim, and analyzing a background section of the specification to detect admissions against interest that affect patentability of the at least one claim; conducting, using the Al engine, a prior art search across patent and non-patent literature databases by constructing at least one of a semantic, keyword, and feature-based queries derived from the individual limitations and prioritizing retrieved references by relevance using machine learning models trained on the corpus of patent examination data, to identify disclosure in references most relevant to the at least one claim; determining, using the legal reasoning engine: whether disclosure in a single prior art reference anticipates the at least one claim under 35 U.S.C. §102,whether disclosure in combinations of prior art references render the at least one claim obvious under 35 U.S.C. §103, through simulated claim construction and application of examiner guidelines from the Manual of Patent Examining Procedure (MPEP), and whether at least one dependent claim contains limitations capable of being amended into independent form to overcome a potential rejection; executing, by the parallel and distributed computing context, the interpreting, the evaluating, the conducting, and the determining as concurrent subparts on distinct computational threads distributed across a plurality of processor cores of one or more servers, and synchronizing, by the parallel and distributed computing context, query results, citations, and a closest prior art reference across the concurrent subparts, such that the concurrent subparts are completed within a predetermined time of less than one day from receipt of the electronic submission; generating, using the Al engine, within the predetermined time, an output decision, comprising: an amendment proposing changes to the at least one claim, figures, and the specification designed to place the utility patent application in condition for allowance, when at least one claim is determined to be patentable with the amendment, wherein the amendment comprises a ranked set of alternative claim amendments generated by the legal reasoning engine. each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification. (ii) an identification of the closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data, and wherein the amendment is responsive to at least one of a suggested acceptance of: rewriting a dependent claim into independent form, incorporating limitations from the specification into the at least one claim, and narrowing the claim to be slightly narrower than the closest prior art reference while retaining support in the specification; and a notice of allowance, when the at least one claim is determined to be allowable as filed, and a written rejection citing statutory grounds and identifying prior art references relied upon, when the at least one claim is determined to be unpatentable; transmitting the generated output decision to an applicant, thereby enabling near-instant determination of at least one of the allowance and the rejection; responsive to an agreement by the applicant to accept the output decision in which an examiner's amendment is proposed, automatically moving the utility patent application to the notice of allowance phase; periodically retraining the legal reasoning engine using feedback from confirmed allowances and rejections comprising validated outcomes of the output decision received, after issuance of the output decision, from at least one of a human examiner and a subsequent appeal result, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes of the legal reasoning engine to reduce misclassifications in subsequent determinations of allowance and rejection. Therefore, claim 1 is directed to one of the four statutory categories of invention: a method.
Step 2A – Prong One: The limitations near-instant evaluation of a utility patent application, the method comprising: receiving ... an ... submission of the utility patent application including at least one claim, a specification, one or more figures, and any associated oath and declaration, wherein the AI engine comprises ... a plurality of domain-specific knowledge bases ... classifying ... a technical field of the utility patent application from the specification and the one or more figures, and automatically selecting, based on the classified technical field, an appropriate model from the plurality of domain-specific models and an appropriate knowledge base from the plurality of domain-specific knowledge bases; interpreting ... each claim of the utility patent application by: parsing ... the at least one claim into individual limitations and determining a scope and meaning of each claim term based on a context provided by the specification and domain-specific definitions from the selected appropriate knowledge base, mapping each limitation to corresponding disclosure within at least one of the specification and the one or more figures, determining whether intrinsic support exists in at least one of the specification and the figures for each limitation, and consulting at least one of a learned treatise and an authoritative reference in response to a determination that intrinsic support is insufficient; evaluating ... the selected appropriate model, and the selected appropriate knowledge base, statutory compliance of the utility patent application, including: adjudicating compliance with 35 U.S.C. §101 by confirming that the claimed subject matter pertains to statutory categories of patent-eligible subject matter in at least one of mechanical, electromechanical, chemical, electrical, pharmaceutical, consumer, and software domains, adjudicating compliance with 35 U.S.C. §112 by determining whether the specification provides adequate written description, enablement sufficient for a person of ordinary skill in the art to make and use the at least one claim and disclosure of the best mode of practicing the at least one claim, verifying consistency of figure numbering with corresponding textual descriptions in the specification, detecting antecedent basis errors within the at least one claim, and analyzing a background section of the specification to detect admissions against interest that affect patentability of the at least one claim; conducting ... a prior art search ... by constructing at least one of a semantic, keyword, and feature-based queries derived from the individual limitations and prioritizing retrieved references by relevance using machine learning models trained on the corpus of patent examination data, to identify disclosure in references most relevant to the at least one claim; determining, using the legal reasoning engine: whether disclosure in a single prior art reference anticipates the at least one claim under 35 U.S.C. §102,whether disclosure in combinations of prior art references render the at least one claim obvious under 35 U.S.C. §103, through simulated claim construction and application of examiner guidelines from the Manual of Patent Examining Procedure (MPEP), and whether at least one dependent claim contains limitations capable of being amended into independent form to overcome a potential rejection; executing ... the interpreting, the evaluating, the conducting, and the determining as concurrent subparts ... and synchronizing ... query results, citations, and a closest prior art reference across the concurrent subparts, such that the concurrent subparts are completed within a predetermined time of less than one day from receipt of the ... submission; generating ... within the predetermined time, an output decision, comprising: an amendment proposing changes to the at least one claim, figures, and the specification designed to place the utility patent application in condition for allowance, when at least one claim is determined to be patentable with the amendment, wherein the amendment comprises a ranked set of alternative claim amendments generated ... each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification. (ii) an identification of the closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data, and wherein the amendment is responsive to at least one of a suggested acceptance of: rewriting a dependent claim into independent form, incorporating limitations from the specification into the at least one claim, and narrowing the claim to be slightly narrower than the closest prior art reference while retaining support in the specification; and a notice of allowance, when the at least one claim is determined to be allowable as filed, and a written rejection citing statutory grounds and identifying prior art references relied upon, when the at least one claim is determined to be unpatentable; transmitting the generated output decision to an applicant, thereby enabling near-instant determination of at least one of the allowance and the rejection; responsive to an agreement by the applicant to accept the output decision in which an examiner's amendment is proposed, automatically moving the utility patent application to the notice of allowance phase; periodically retraining ... using feedback from confirmed allowances and rejections comprising validated outcomes of the output decision received, after issuance of the output decision, from at least one of a human examiner and a subsequent appeal result, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes of the legal reasoning engine to reduce misclassifications in subsequent determinations of allowance and rejection, as drafted, is a method that, under its broadest reasonable interpretation, only covers concepts of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). That is, nothing in the claim elements disclose anything outside the groupings of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. Claim 1 merely describe show to generally “apply” the concept of the aforementioned abstract idea using generic computer components. The additional elements of claim 1, computer-implemented, an artificial intelligence (AI) engine, electronic, patent and non-patent literature databases a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions, at least one model trained on software-related inventions, a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, and a parallel and distributed computing context, and distinct computational threads distributed across a plurality of processor cores of one or more servers, are recited at a high level of generality and are merely invoked as generic computer tools to perform the aforementioned abstract idea. Simply implementing the abstract idea on a generic computerized system is not a practical application of the abstract idea. Accordingly, alone and in combination, the additional elements of claim 1 do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims as a whole merely describe the abstract idea generally “applied” to a generic computer environment. The additional elements of claim 1, computer-implemented, an artificial intelligence (AI) engine, electronic, patent and non-patent literature databases a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions, at least one model trained on software-related inventions, a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, and a parallel and distributed computing context, and distinct computational threads distributed across a plurality of processor cores of one or more servers, are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which this additional element is described indicates that the additional element is sufficiently known such that the specification does not need to describe the particulars of the additional element to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Claims 2-4, 6-7, 11-14, and 21-26 have been given the full two-part analysis including analyzing the limitations both individually and in combination. Claims 2-4, 6-7, 11-14, and 21-26 when analyzed individually, and in combination, are also held to be patent ineligible under 35 U.S.C. 101. The recited limitations of the dependent claims fail to establish that the claims do not recite an abstract idea because the recited limitations of the dependent claims merely further narrow the abstract idea.
Step 2A – Prong Two: The limitations of the dependent claims fail to integrate an abstract idea into a practical application because the claims as a whole merely describe how to generally “apply” a method of the aforementioned abstract idea. Although claim 22 recites the additional element a plurality of interconnected servers, and claim 26 recites the additional element simultaneous multithreading, and hardware acceleration for machine learning computations, the claims as a whole merely describe how to generally “apply” the aforementioned abstract idea in a generic computer environment. Thus, even when viewed as a whole, nothing in the claims integrates the abstract idea into a practical application.
Step 2B: Performing the further narrowed abstract ideas of the dependent claims on the additional elements of the independent claim, individually or in combination, does not impose any meaningful limits on practicing the abstract ideas and amount to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Similarly, the recited limitations of the dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept. Although claim 22 recites the additional element a plurality of interconnected servers, and claim 26 recites the additional element simultaneous multithreading, and hardware acceleration for machine learning computations, they are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which the additional elements are described indicates that the additional elements are sufficiently known such that the specification does not need to describe the particulars of the additional elements to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Step 1: Claim 17 recites a method of near-instant evaluation of a utility patent application, comprising: receiving, by an artificial intelligence (AI) engine, electronic data representing the utility patent application comprising a specification, one or more claims, and one or more figures, wherein the AI engine comprises a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions and at least one model trained on software-related inventions, a plurality of domain-specific knowledge bases, and a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions; classifying, using the natural language processing model, a technical field of the utility patent application from the specification and the one or more figures, and automatically selecting, based on the classified technical field, an appropriate model from the plurality of domain-specific models and an appropriate knowledge base from the plurality of domain-specific knowledge bases; analyzing, using the selected appropriate model and the selected appropriate knowledge base of the AI engine, the utility patent application by interpreting the one or more claims in view of the specification and the one or more figures to identify support, consistency, and compliance with patentability criteria; evaluating, using the legal reasoning engine, patentability of the one or more claims based at least in part on: correspondence between the one or more claims and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; determining, using the legal reasoning engine, whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; generating within minutes of using the Al engine to analyze the utility patent application any one of: a notice of allowance when the utility patent application is determined to be allowable as filed, a rejection decision identifying prior art and statutory grounds when the utility patent application is determined to be unallowable, and a proposed amendment designed to place the utility patent application in condition for allowance when the application is determined to be conditionally allowable, wherein the proposed amendment comprises a ranked set of alternative claim amendments generated by the legal reasoning engine, each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification, (ii) an identification of a closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data: transmitting any one of the notice of allowance, the rejection decision, and the proposed amendment to an applicant, thereby enabling near-instant patent examination; and periodically retraining the legal reasoning engine using feedback from confirmed allowance and final rejection decisions received after the transmitting, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes of the legal reasoning engine to reduce misclassifications in subsequent allowance and rejection determinations. Therefore, claim 17 is directed to one of the four statutory categories of invention: a method.
Step 2A – Prong One: The limitations near-instant evaluation of a utility patent application, comprising: receiving ... data representing the utility patent application comprising a specification, one or more claims, and one or more figures, wherein ... a plurality of domain-specific knowledge bases, and ... classifying ... a technical field of the utility patent application from the specification and the one or more figures, and automatically selecting, based on the classified technical field ... analyzing ... the utility patent application by interpreting the one or more claims in view of the specification and the one or more figures to identify support, consistency, and compliance with patentability criteria; evaluating ... patentability of the one or more claims based at least in part on: correspondence between the one or more claims and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; determining ... whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; generating within minutes of ... analyze the utility patent application any one of: a notice of allowance when the utility patent application is determined to be allowable as filed, a rejection decision identifying prior art and statutory grounds when the utility patent application is determined to be unallowable, and a proposed amendment designed to place the utility patent application in condition for allowance when the application is determined to be conditionally allowable, wherein the proposed amendment comprises a ranked set of alternative claim amendments generated by the legal reasoning engine, each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification, (ii) an identification of a closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data: transmitting any one of the notice of allowance, the rejection decision, and the proposed amendment to an applicant, thereby enabling near-instant patent examination; and periodically retraining ... using feedback from confirmed allowance and final rejection decisions received after the transmitting, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes ... to reduce misclassifications in subsequent allowance and rejection determinations, as drafted, is a method that, under its broadest reasonable interpretation, only covers concepts of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). That is, nothing in the claim elements disclose anything outside the groupings of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. Claim 17 merely describe show to generally “apply” the concept of the aforementioned abstract idea using generic computer components. The additional elements of claim 17, a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions, at least one model trained on software-related inventions, and a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, are recited at a high level of generality and are merely invoked as generic computer tools to perform the aforementioned abstract idea. Simply implementing the abstract idea on a generic computerized system is not a practical application of the abstract idea. Accordingly, alone and in combination, the additional elements of claim 17 do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims as a whole merely describe the abstract idea generally “applied” to a generic computer environment. The additional elements of claim 17, a natural language processing model, a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions, at least one model trained on software-related inventions, and a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which this additional element is described indicates that the additional element is sufficiently known such that the specification does not need to describe the particulars of the additional element to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Claim 27 has been given the full two-part analysis including analyzing the limitations both individually and in combination. Claim 27 when analyzed individually, and in combination, are also held to be patent ineligible under 35 U.S.C. 101. The recited limitations of the dependent claims fail to establish that the claims do not recite an abstract idea because the recited limitations of the dependent claims merely further narrow the abstract idea.
Step 2A – Prong Two: The limitations of the dependent claims fail to integrate an abstract idea into a practical application because the claims as a whole merely describe how to generally “apply” a method of the aforementioned abstract idea. Although claim 27 recites the additional elements a parallel and distributed computing context, computational threads distributed across a plurality of processor cores, and one or more servers, the claims as a whole merely describe how to generally “apply” the aforementioned abstract idea in a generic computer environment. Thus, even when viewed as a whole, nothing in the claims integrates the abstract idea into a practical application.
Step 2B: Performing the further narrowed abstract ideas of the dependent claims on the additional elements of the independent claim, individually or in combination, does not impose any meaningful limits on practicing the abstract ideas and amount to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Similarly, the recited limitations of the dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept. Although claim 27 recites the additional elements a parallel and distributed computing context, computational threads distributed across a plurality of processor cores, and one or more servers, they are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which the additional elements are described indicates that the additional elements are sufficiently known such that the specification does not need to describe the particulars of the additional elements to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Step 1: Claim 19 recites a system for near-instant evaluation of a utility patent application, comprising: a processor comprising a plurality of processor cores; a memory storing executable instructions that, when executed by the processor, configure the system to perform operations comprising: receiving, by an artificial intelligence (AI) engine, electronic data representing a utility patent application including a specification, at least one claim, and one or more figures, wherein the AI engine comprises a legal reasoning engine trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, and a parallel and distributed computing context, analyzing the utility patent application by interpreting the at least one claim in view of the specification and the one or more figures to identify support, consistency, and compliance with patentability criteria, leveraging the parallel and distributed computing context to perform said analyzing in concurrent subparts executed on distinct computational threads distributed across the plurality of processor cores, including claim parsing, prior art searching, and application of patentability rules, and synchronizing, by the parallel and distributed computing context, query results, citations, and a closest prior art reference across the concurrent subparts, such that evaluation is completed within minutes of receiving the utility patent application; evaluating, using the legal reasoning engine, patentability of the at least one claim based at least in part on: correspondence between the at least one claim and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; determining, using the legal reasoning engine, whether the utility patent application as filed is any one of allowable, unallowable, and conditionally allowable with amendment; generating any one of: a notice of allowance when the utility patent application is determined to be allowable as filed, a rejection decision identifying prior art and statutory grounds when the utility patent application is determined to be unallowable, and a proposed amendment designed to place the utility patent application in condition for allowance when the application is determined to be conditionally allowable, wherein the proposed amendment comprises a ranked set of alternative claim amendments generated by the legal reasoning engine, each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification, (ii) an identification of the closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data; and periodically retraining the legal reasoning engine using feedback from confirmed allowances and rejections received after the generating, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes of the legal reasoning engine to reduce misclassifications in subsequent allowance and rejection determinations. Therefore, claim 19 is directed to one of the four statutory categories of invention: a machine.
Step 2A – Prong One: The limitations near-instant evaluation of a utility patent application, comprising ... perform operations comprising: receiving ... data representing a utility patent application including a specification, at least one claim, and one or more figures, wherein ... trained on a corpus of patent examination data comprising past patent applications, prior art citations, and examiner decisions, and a parallel and distributed computing context, analyzing the utility patent application by interpreting the at least one claim in view of the specification and the one or more figures to identify support, consistency, and compliance with patentability criteria, leveraging the parallel and distributed computing context to perform said analyzing in concurrent subparts executed ... including claim parsing, prior art searching, and application of patentability rules, and synchronizing ... query results, citations, and a closest prior art reference across the concurrent subparts, such that evaluation is completed within minutes of receiving the utility patent application; evaluating ... patentability of the at least one claim based at least in part on: correspondence between the at least one claim and the disclosure of the specification, and relevance of prior art identified ... determining ... whether the utility patent application as filed is any one of allowable, unallowable, and conditionally allowable with amendment; generating any one of: a notice of allowance when the utility patent application is determined to be allowable as filed, a rejection decision identifying prior art and statutory grounds when the utility patent application is determined to be unallowable, and a proposed amendment designed to place the utility patent application in condition for allowance when the application is determined to be conditionally allowable, wherein the proposed amendment comprises a ranked set of alternative claim amendments generated ... each alternative claim amendment accompanied by (i) citations to specific supporting passages in the specification, (ii) an identification of the closest prior art reference distinguished by the alternative claim amendment, and (iii) a quantified confidence score representing a probability of allowance derived from statistical modeling over the corpus of patent examination data; and periodically retraining ... using feedback from confirmed allowances and rejections received after the generating, wherein the periodic retraining uses historical annotations within annotated claim sets, historical citations, and historical closest prior art references as labeled examples and adjusts weight assignments across decision nodes ... to reduce misclassifications in subsequent allowance and rejection determinations, as drafted, is a method that, under its broadest reasonable interpretation, only covers concepts of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). That is, nothing in the claim elements disclose anything outside the groupings of “Certain Methods of Organizing Human Activity” (e.g., commercial interactions – business relations). Accordingly, the claim recites an abstract idea.
Step 2A – Prong Two: The judicial exception is not integrated into a practical application. Claim 19 merely describe show to generally “apply” the concept of the aforementioned abstract idea using generic computer components. The additional elements of claim 19, a system, a processor, a plurality of processor cores, a memory, an artificial intelligence (AI) engine, electronic, a legal reasoning engine, distinct computational threads distributed across the plurality of processor cores, and one or more searchable databases, are recited at a high level of generality and are merely invoked as generic computer tools to perform the aforementioned abstract idea. Simply implementing the abstract idea on a generic computerized system is not a practical application of the abstract idea. Accordingly, alone and in combination, the additional elements of claim 19 do not integrate the abstract idea into a practical application. The claims are directed to an abstract idea.
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims as a whole merely describe the abstract idea generally “applied” to a generic computer environment. The additional elements of claim 19, a system, a processor, a plurality of processor cores, a memory, an artificial intelligence (AI) engine, electronic, a legal reasoning engine, distinct computational threads distributed across the plurality of processor cores, and one or more searchable databases, are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which this additional element is described indicates that the additional element is sufficiently known such that the specification does not need to describe the particulars of the additional element to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Claim 28 has been given the full two-part analysis including analyzing the limitations both individually and in combination. Claim 28 when analyzed individually, and in combination, are also held to be patent ineligible under 35 U.S.C. 101. The recited limitations of the dependent claims fail to establish that the claims do not recite an abstract idea because the recited limitations of the dependent claims merely further narrow the abstract idea.
Step 2A – Prong Two: The limitations of the dependent claims fail to integrate an abstract idea into a practical application because the claims as a whole merely describe how to generally “apply” a method of the aforementioned abstract idea. Although claim 28 recites the additional elements a natural language processing model, and a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions and at least one model trained on software-related inventions, the claims as a whole merely describe how to generally “apply” the aforementioned abstract idea in a generic computer environment. Thus, even when viewed as a whole, nothing in the claims integrates the abstract idea into a practical application.
Step 2B: Performing the further narrowed abstract ideas of the dependent claims on the additional elements of the independent claim, individually or in combination, does not impose any meaningful limits on practicing the abstract ideas and amount to merely using a computer, in its ordinary capacity, as a tool to perform the abstract idea. Similarly, the recited limitations of the dependent claims fail to establish that the claims provide an inventive concept because claims that merely use a computer, in its ordinary capacity, as a tool to perform the abstract idea cannot provide an inventive concept. Although claim 28 recites the additional elements a natural language processing model, and a plurality of domain-specific models including at least one model trained on mechanical and electromechanical inventions and at least one model trained on software-related inventions, they are recited at a high level of generality and are merely invoked as generic computer components upon which the abstract idea is “applied.” The high level of generality in which the additional elements are described indicates that the additional elements are sufficiently known such that the specification does not need to describe the particulars of the additional elements to satisfy the statutory disclosure requirements. Thus, even when viewed as a whole, nothing in the claims add significantly more to the abstract idea. Therefore, the claims are not patent eligible.
Reasons for Novelty
Claims 1-4, 6-7, 11-14, 17, 19, and 21-28 are considered novel over the prior art. Examiner has determined that the combination of claim elements is unanticipated by prior art and that it would not have been obvious to one of ordinary skill in the art before the time of filing to have arrived at the claimed invention. In the previous office action Examiner rejected the independent claims as being obvious over MPEP Ninth Edition Rev.07.2022 (February 2023 publication) (hereinafter “MPEP23”) in view of Ehrlich (U.S. Pub. No. 2024/0303416). Other relevant prior art includes: Okamoto (U.S. Pub. No. 2024/0177255), Tran (U.S. Pub. No. 2023/0252224), Cronin (U.S. Pub. No. 2020/0065924), Yoo (U.S. Pub. No. 2022/0215172), and Whewell (U.S. Pub. No. 2004/0205599). Examiner considers these references the closest prior art to the claimed invention. However, given the amendments to the independent claims, Examiner has determined that the previously cited combinations of references do not teach the independent claims as a whole. Furthermore, Examiner has determined that it would not have been obvious to one of ordinary skill in the art to combine these previously cited references with further prior art in order to arrive at the claimed invention. Therefore, the independent and dependent claims are all considered novel over the prior art.
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.
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/CHRISTOPHER GOMEZ/
Examiner, Art Unit 3628
