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 1-20 are pending. This action is non-final.
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: 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; interpreting, using the Al engine, each claim of the utility patent application by: parsing the at least one claim into individual limitations, 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 either intrinsic support is insufficient; evaluating, using the Al engine, 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 to identify disclosure in references most relevant to the at least one claim; determining, using the Al 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, comprising 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; generating, using the Al engine, within a predetermined time preferably within minutes, 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, and 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 a closest prior art 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; and 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. 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; interpreting ... each claim of the utility patent application by: parsing the at least one claim into individual limitations, 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 either intrinsic support is insufficient; evaluating ... 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 across patent and non-patent literature databases to identify disclosure in references most relevant to the at least one claim; determining ... 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, comprising 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; generating ... within a predetermined time preferably within minutes, 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, and 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 a closest prior art 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; and 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, 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, and patent and non-patent literature 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 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, and electronic, 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 2-16 have been given the full two-part analysis including analyzing the limitations both individually and in combination. Claims 2-16 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 8 recites the additional element a natural language processing model, claim 10 recites the additional element models, claim 13 recites the additional element computer vision techniques, and claim 16 recites the additional element a legal reasoning engine, 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 8 recites the additional element a natural language processing model, claim 10 recites the additional element models, claim 13 recites the additional element computer vision techniques, and claim 16 recites the additional element a legal reasoning engine, 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: analyzing, using an artificial intelligence (Al) engine the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria; evaluating, using the Al engine, patentability of the claims based at least in part on: correspondence between the claims and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; determining, using the Al engine, whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; and 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. 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: analyzing ... the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria; evaluating ... patentability of the claims based at least in part on: correspondence between the claims and the disclosure of the specification, and relevance of prior art identified ... determining ... whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; and generating within minutes ... 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, 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, computer-implemented, an artificial intelligence (AI) engine, 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 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, computer-implemented, and an artificial intelligence (AI) engine, 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 18 has been given the full two-part analysis including analyzing the limitations both individually and in combination. Claim 18 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. Claim 18 recites no additional elements which were not previously recited in claim 17. 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. Claim 18 recites no additional elements which were not previously recited in claim 17. 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 ... perform operations comprising: receiving ... data representing a utility patent application including a specification, at least one claim, and one or more figures, analyzing the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria, leveraging parallel processing and distributed computing to perform said analyzing in concurrent subparts, including claim parsing, prior art searching, and application of patentability rules, such that evaluation is completed within minutes of receiving the utility patent application; evaluating patentability of the claims based at least in part on: correspondence between the claims 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. 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: analyzing ... the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria; evaluating ... patentability of the claims based at least in part on: correspondence between the claims and the disclosure of the specification, and relevance of prior art identified ... determining ... whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; and generating within minutes ... 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, 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 memory, an artificial intelligence (AI) engine, electronic, 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 memory, an artificial intelligence (AI) engine, electronic, 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 20 has been given the full two-part analysis including analyzing the limitations both individually and in combination. Claim 20 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. Claim 20 recites no additional elements which were not previously recited in claim 19. 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. Claim 20 recites no additional elements which were not previously recited in claim 19. 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 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.
Claims 1-4, 6-7, 9, 11-12, 14-15, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over MPEP Ninth Edition Rev.07.2022 (February 2023 publication) (hereinafter “MPEP23”) in view of Ehrlich (U.S. Pub. No. 2024/0303416). (Examiner’s Note: Claims 5, 10, 16, 18, and 20 are not rejected under either 35 USC 102 or 103 and are therefore considered novel).
Regarding claim 1, MPEP discloses the following limitations:
A computer-implemented method of near-instant evaluation of a utility patent application, the method comprising: [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application.]
receiving ... 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; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 608 further teaches that a set of claims, a specification, figures, and an oath and declaration may be submitted electronically for examination (i.e., receiving ... 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).]
interpreting ... each claim of the utility patent application by: parsing the at least one claim into individual limitations [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim (i.e., interpreting ... each claim of the utility patent application by: parsing the at least one claim into individual limitations).]
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; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a) (i.e., mapping each limitation to corresponding disclosure within at least one of the specification and the one or more figures).]
consulting at least one of a learned treatise and an authoritative reference in response to a determination that either intrinsic support is insufficient; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 2163 further teaches that the MPEP (i.e., an authoritative reference) should be referenced if an examiner determines that there is insufficient support for the claim limitations in question (i.e., consulting at least one of a learned treatise and an authoritative reference in response to a determination that either intrinsic support is insufficient).]
evaluating ... 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 [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter.]
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 [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2163 further teaches an examiner determines that the application provides adequate written description (i.e., the specification provides adequate written description); MPEP23 § 2164 further teaches an examiner determines that the application provides adequate enabling disclosure (i.e., enablement sufficient for a person of ordinary skill in the art to make); and MPEP23 § 2165 further teaches an examiner determining compliance with the best mode requirement (i.e., 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 [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 608.02(b) further teaches an examiner verifying that the figure numbers appropriately match the referenced figure numbers in the written description (i.e., verifying consistency of figure numbering with corresponding textual descriptions in the specification).]
detecting antecedent basis errors within the at least one claim [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2173.05 further teaches an examiner detecting antecedent basis errors in the claims.]
analyzing a background section of the specification to detect admissions against interest that affect patentability of the at least one claim; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2129 further teaches an examiner considering admissions of prior art in the specification as an admission against interest that affect patentability.]
conducting ... a prior art search across patent and non-patent literature databases to identify disclosure in references most relevant to the at least one claim; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases.]
determining ... whether disclosure in a single prior art reference anticipates the at least one claim under 35 U.S.C. §102 [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102.]
whether disclosure in combinations of prior art references render the at least one claim obvious under 35 U.S.C. §103, comprising through simulated claim construction and application of examiner guidelines from the Manual of Patent Examining Procedure (MPEP) [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
whether at least one dependent claim contains limitations capable of being amended into independent form to overcome a potential rejection; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim.]
generating ... within a predetermined time preferably within minutes, an output decision, comprising: [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim.]
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, and responsive to at least one of a suggested acceptance of: [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim.]
rewriting a dependent claim into independent form, incorporating limitations from the specification into the at least one claim [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim.]
narrowing the claim to be slightly narrower than a closest prior art while retaining support in the specification [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes slightly narrowing claims to traverse a prior art rejection while retaining support in the specification under 35 USC § 112(a).]
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; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections.]
transmitting the generated output decision to an applicant, thereby enabling near-instant determination of at least one of the allowance and the rejection; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections. MPEP23 § 707.12 further teaches that the examiner’s action is transmitted electronically or copies are mailed to the applicant.]
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. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim. MPEP23 § 1302.04 further teaches that the examiner’s amendment may be discussed via email correspondence or over the phone, and that the examiner’s amendment must be approved by the applicant.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... an artificial intelligence (Al) engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 2, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein the proposed examiner's amendment automatically resolves antecedent basis errors by introducing proper referencing terms. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2173.05 further teaches an examiner detecting antecedent basis errors in the claims. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim. MPEP23 § 1302.04 further teaches that the examiner’s amendment may be discussed via email correspondence or over the phone, and that the examiner’s amendment must be approved by the applicant.]
Regarding claim 3, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein ... selects the dependent claim that includes non-obvious subject matter, and rewrites it into independent form to achieve allowance. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes slightly narrowing claims to traverse a prior art rejection while retaining support in the specification under 35 USC § 112(a). MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 4, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein ... generates an annotated claim set displaying tracked changes with inline references to supporting paragraphs in the specification. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes slightly narrowing claims to traverse a prior art rejection while retaining support in the specification under 35 USC § 112(a). MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim. MPEP23 § 714 further teaches that when amendments are made, the text of any deleted matter must be shown by strike-through. MPEP23 § 2163 further teaches that in order to satisfy the written description requirement, a satisfactory description must be found in the originally-filed claims or any other portion of the originally-filed specification (i.e., wherein ... generates an annotated claim set displaying tracked changes with inline references to supporting paragraphs in the specification).]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 6, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein the proposed examiner's amendment is designed to be just narrow enough to distinguish over the closest prior art, preserving maximum claim scope while placing the case in condition for the allowance. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes slightly narrowing claims to traverse a prior art rejection while retaining support in the specification under 35 USC § 112(a).]
Regarding claim 7, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein upon rejection ... proposes both a claim amendment option and a written rejection option, enabling the applicant to choose between acceptance of amendment for the allowance or submission of arguments in response. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes slightly narrowing claims to traverse a prior art rejection while retaining support in the specification under 35 USC § 112(a). The alternative to a proposed examiner’s amendment is a claim rejection.
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 9, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein ... evaluates compliance with disclosure requirements by confirming that each claimed feature has corresponding support in the specification, thereby checking for enablement and written description sufficiency for the claims. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2163 further teaches an examiner determines that the application provides adequate written description and MPEP23 § 2164 further teaches an examiner determines that the application provides adequate enabling disclosure.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 11, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein analyzing the patent application further comprises performing an automated prior art search by querying one or more patent and technical literature databases using at least one of keywords, semantic queries, and extracted features from the at least one claim and the specification, to retrieve relevant prior art references without human intervention, and wherein ... evaluates novelty of each claim by comparing the claim elements against the retrieved prior art references and determining whether disclosure in a single prior art reference discloses all of the elements of a given claim, indicating a lack of novelty if such a reference is found. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102 based on searching the prior art databases.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 12, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein ... evaluates non-obviousness by, in response to finding no single reference that anticipates the claim, identifying combinations of two or more prior art references that collectively teach all elements of the claim and assessing whether the person of ordinary skill in the art would have been motivated to combine those references to arrive at the at least one claim, and wherein the analysis applies patent examination guidelines for obviousness determinations, including analyzing the differences between the at least one claim and the prior art, considering the level of ordinary skill in the pertinent art, and applying established rationales to determine if there is an apparent motivation to combine the prior art teachings, thereby ensuring the obviousness evaluation is consistent with examiner standards. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 14, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein the output decision is accompanied by a detailed explanation generated ... the explanation including citations to the relevant prior art references for each claim limitation, an indication of any differences between the claimed invention and the prior art, and a rationale for at least one recommended allowance and rejection of each claim. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102 based on searching the prior art databases.MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 15, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein ... leverages parallel processing ... to perform the analyzing step in subparts concurrently including claim parsing, prior art searching, and patentability rule application, such that the patentability determination is completed within minutes of receiving the utility patent application, thereby achieving near-instant examination. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim (i.e., claim parsing). MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102 based on searching the prior art databases.MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103 (i.e., prior art searching). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter (i.e., patentability rule application).]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
... distributed computing ... [See [0083]; [0085] Ehrlich further teaches that the AI system may be implemented as cloud-based services.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 17, MPEP23 discloses the following limitations:
analyzing ... the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
evaluating ... patentability of the claims based at least in part on: correspondence between the claims and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
determining ... whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections.]
and generating within minutes ... 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. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim. MPEP23 § 1302.04 further teaches that the examiner’s amendment may be discussed via email correspondence or over the phone, and that the examiner’s amendment must be approved by the applicant.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... using an artificial intelligence (AI) engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Regarding claim 19, MPEP23 discloses the following limitations:
Receiving ... electronic data representing a utility patent application including a specification, at least one claim, and one or more figures [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 608 further teaches that a set of claims, a specification, figures, and an oath and declaration may be submitted electronically for examination.]
analyzing the utility patent application by interpreting the claims in view of the specification and the figures to identify support, consistency, and compliance with patentability criteria; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
leveraging parallel processing and distributed computing to perform said analyzing in concurrent subparts, including claim parsing, prior art searching, and application of patentability rules, such that evaluation is completed within minutes of receiving the utility patent application; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim (i.e., claim parsing). MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102 based on searching the prior art databases.MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103 (i.e., prior art searching). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter (i.e., patentability rule application).]
evaluating patentability of the claims based at least in part on: correspondence between the claims and the disclosure of the specification, and relevance of prior art identified in one or more searchable databases; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23§ 2103 further teaches examining each claim limitation of each claim. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 2106 further teaches adjudicating compliance with 35 USC § 101 by determining that the subject matter of the claims pertain to the statutory categories of patent-eligible subject matter. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2131 further teaches determining whether a prior art reference anticipates a claim limitation under 35 USC § 102. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103.]
determining whether a claim of the utility patent application is any one of allowable, unallowable, and conditionally allowable with an amendment; [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections.]
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. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 1303 further teaches an examiner will issue a notice of allowance when the claims are determined to be allowable. MPEP23 § 2103 further teaches rejecting the claims if they are not allowable, and providing the appropriate statutory bases and references for those rejections. MPEP23 § 1302.04 further teaches that an examiner may propose examiner’s amendments to the claims which would bring the claims into a condition for allowance, which includes moving dependent claim limitations into an independent claim. MPEP23 § 1302.04 further teaches that the examiner’s amendment may be discussed via email correspondence or over the phone, and that the examiner’s amendment must be approved by the applicant.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... using an artificial intelligence (AI) engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over MPEP Ninth Edition Rev.07.2022 (February 2023 publication) (hereinafter “MPEP23”) in view of Ehrlich (U.S. Pub. No. 2024/0303416) in view of Okamoto (U.S. Pub. No. 2024/0177255).
Regarding claim 8, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein analyzing the utility patent application comprises ... parse the claims and identify individual claim elements, determining the scope and meaning of each claim term based on a context provided by the specification and domain-specific definitions. [MPEP23 § 2111 teaches how an examiner interprets claims and generates a broadest reasonable interpretation of a set of claims based on the plain meaning of words, the applicant’s own lexicography, and terms of art for different fields.]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... performing automated claim construction ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
MPEP23 in view of Ehrlich does not, however Okamoto does, disclose the following limitations:
... using a natural language processing model ... [See [0265] Okamoto teaches a machine learning model reading claim elements using natural language processing.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent analysis machine learning techniques of MPEP23 in view of Ehrlich with the patent analysis machine learning techniques of Okamoto. By making this combination, the system of MPEP23 in view of Ehrlich would be able to explicitly read claim limitations, and thereby would be better able to analyze and draft amendments for claim limitations.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over MPEP Ninth Edition Rev.07.2022 (February 2023 publication) (hereinafter “MPEP23”) in view of Ehrlich (U.S. Pub. No. 2024/0303416) in view of Tran (U.S. Pub. No. 2023/0252224).
Regarding claim 13, MPEP23 in view of Ehrlich discloses all claim 1 limitations. MPEP23 further discloses the following limitations:
wherein analyzing the utility patent application includes processing any submitted figures ... identify at least one depicted component and process steps, and correlating those identified elements with the claim elements and prior art references to enhance the accuracy of the novelty and obviousness analysis for mechanical and electromechanical inventions. [MPEP23 § 2103 teaches the process for patent examination. Specifically, MPEP23 § 2103 teaches the major steps of examining a patent application. MPEP23 § 2163 further teaches that each claim limitation must be supported by a written description or by one of the figures in order to satisfy the requirements of 35 USC 112(a). MPEP23 § 608.02(b) further teaches an examiner verifying that the figure numbers appropriately match the referenced figure numbers in the written description. MPEP23 § 904 further teaches an examiner conducting a prior art search across both patent and non-patent literature databases. MPEP23 § 2158 further teaches determining whether a prior art reference renders a claim limitation obvious under 35 USC § 103. ]
MPEP23 does not, however Ehrlich does, disclose the following limitations:
... the AI engine ... [See [0072-0074] Ehrlich teaches inputting a set of guidelines for drafting a patent application into an AI machine, and that the output claims can then be refined by providing additional information to the AI machine.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, a system would be able to utilize generic artificial intelligence technology in order to draft patent application claims in accordance with the MPEP, thereby helping ensure that the drafted claims adhered to the guidance of the MPEP.
MPEP23 in view of Ehrlich does not, however Tran does, disclose the following limitations:
... using computer vision techniques ... [See [0056]; [0062] Tran teaches using computer vision techniques in order to identify figures and part numbers.]
It would have been obvious to one of ordinary skill in the art before the time of filing to combine the patent application drafting rules of MPEP23 with the patent drafting artificial intelligence of Ehrlich. By making this combination, the system would be able to utilize generic computer vision techniques in order to better read and understand figures accompanying a patent application.
Prior Art
The following prior art is relevant to the invention but was not used in prior art rejections:
Cronin (U.S. Pub. No. 2020/0065924) – Idea assessment and landscape mapping.
Yoo (U.S. Pub. No. 2022/0215172) – Patent document creating device, method, computer program, computer-readable recording medium, server, and system.
Whewell (U.S. Pub. No. 2004/0205599) – Preliminary patent prosecution reports.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRIS GOMEZ whose telephone number is (571) 272-0926. The examiner can normally be reached Mon-Fri 7-4 CDT.
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, Shannon Campbell can be reached at 571-272-5587. 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.
/CHRISTOPHER GOMEZ/
Examiner, Art Unit 3628
Prosecution Insights