DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on XXXXXXXXXXXXXX has been entered.
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
Claims X are canceled.
Claims X are new.
Claims 1-5 are pending and have been examined.
This action is in reply to the papers filed on 12/04/2025 (effective filing date 12/26/2024).
Information Disclosure Statement
The information disclosure statement(s) submitted: 12/04/2025, has/have been considered by the Examiner and made of record in the application file.
Amendment
The present Office Action is based upon the original patent application filed on xxx as modified by the amendment filed on xxx.
Reasons For Allowance
Prior-Art Rejection withdrawn
Claims xxx are allowed. Independent claims X, Y, and Z all contain the same inventive scope. The closest prior art (See PTO-892, Notice of References Cited) does not teach the claimed:
The closest prior-art (xxx) teach the features as disclosed in Non-final Rejection (xxxx), however, these cited references do not teach and the prior-art does not teach at least the following combination of features and/or elements:
Claim Rejections - 35 USC §101 - Withdrawn
Per Applicant’s amendments and arguments and considering new guidance in the MPEP, the rejections are withdrawn. Specifically, in Applicant’s Remarks (dated 03/14/2017, pgs. 8-11), Applicant traverses the 35 USC §101 rejections arguing that the amended claims recite new limitations that are not abstract, amount to significantly more, are directed to a practical application, etc… For example, Applicant argues….
In support of their arguments, Applicant cites to the following recent Fed. Cir. court cases (i.e., Alice Corp. v. CLS Bank Int’l, SRI Int’l, Inc. v. Cisco Systems, Inc., Ultramercial, Inc. v. Hulu, LLC, Berkheimer, Core Wireless, McRO, Enfish, Bascom, DDR, etc…).
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 1-5 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter because the claimed invention is directed to an abstract idea without significantly more. These claims recite a method, system/device, and computer readable medium for processing and storing information.
Claim 4 recites [a]n information processing method comprising causing a computer to execute a process of: extracting a characteristic part of a disclosure described in an independent claim in a patent document; acquiring an investigation result output from a generative model by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information; and outputting the investigation result.
The claims are being rejected according to the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p. 50-57 (Jan. 7, 2019)).
Step 1: Does the Claim Fall within a Statutory Category?
Yes. Claim 4 recites a method and, therefore, are directed to the statutory class of a process. Claims 1-3 recite a system/apparatus and, therefore, are directed to the statutory class of machine. Claim 5 recites a non-transitory computer readable medium/computer product and, therefore, are directed to the statutory class of a manufacture.
Step 2A, Prong One: Is a Judicial Exception Recited?
Yes. The following tables identify the specific limitations that recite an abstract idea. The column that identifies the additional elements will be relevant to the analysis in step 2A, prong two, and step 2B.
Claim 4: Identification of Abstract Idea and Additional Elements, using Broadest Reasonable Interpretation
Claim Limitation
Abstract Idea
Additional Element
4. An information processing method comprising causing a computer to execute a process of:
No additional elements are positively claimed.
The preamble is given little patentable weight.
extracting a characteristic part of a disclosure described in an independent claim in a patent document;
This limitation includes the step(s) of: extracting a characteristic part of a disclosure described in an independent claim in a patent document.
No additional elements are positively claimed.
This limitation is directed to processing and/or communicating known information to facilitate processing and storing information which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
fundamental economic principles or practices (including hedging, insurance, mitigating risk), and/or
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
No additional elements are positively claimed.
The ‘characteristic part of a disclosure’ and ‘patent document’ are NOT considered Additional Elements. They are interpreted as purely information, software, and/or code.
acquiring an investigation result output from a generative model by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information; and
This limitation includes the step(s) of: acquiring an investigation result output from a generative model by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information.
No additional elements are positively claimed.
This limitation is directed to processing and/or communicating known information to facilitate processing and storing information which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
fundamental economic principles or practices (including hedging, insurance, mitigating risk), and/or
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
No additional elements are positively claimed.
The ‘generative model’ and ‘characteristic part and technical information’ are NOT considered Additional Elements. They are interpreted as purely information, software, and/or code.
outputting the investigation result.
This limitation includes the step(s) of: outputting the investigation result.
No additional elements are positively claimed.
This limitation is directed to processing and/or communicating known information to facilitate processing and storing information which may be categorized as any of the following:
mental process – concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
and/or
certain method of organizing human activity –
fundamental economic principles or practices (including hedging, insurance, mitigating risk), and/or
commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations).
No additional elements are positively claimed.
The ‘investigation result’ is NOT considered Additional Elements. They are interpreted as purely information, software, and/or code.
As shown above, under Step 2A, Prong One, the claims recite a judicial exception (an abstract idea). The claims are directed to the abstract idea of processing and storing information, which, pursuant to MPEP 2106.04, is aptly categorized as a is aptly categorized as a mental process and/or a method of organizing human activity. Therefore, under Step 2A, Prong One, the claims recite a judicial exception.
The method claims do NOT recite any additional elements. Consequently, at least the method claims must be construed as abstract and capable of being performed mentally and/or manually with just pen and paper. The Office encourages Applicant to positively claim the structural features necessary to perform each individual method step and feature.
Next, the aforementioned claims recite additional functional elements that are associated with the judicial exception, including: information processing device / computer to implement the system/device and CRM claims. Examiner understands these limitations to be insignificant extrasolution activity. (See Accenture, 728 F.3d 1336, 108 U.S.P.Q.2d 1173 (Fed. Cir. 2013), citing Cf. Diamond v. Diehr, 450 U.S. 175, 191-192 (1981) ("[I]nsignificant post-solution activity will not transform an unpatentable principle in to a patentable process.”).
The aforementioned claims also recite additional technical elements including: information processing device / computer to implement the system/device and CRM claims.. These limitations are recited at a high level of generality and appear to be nothing more than generic computer components. Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110 USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at 1984.
Step 2A, Prong Two: Is the Abstract Idea Integrated into a Practical Application?
No. The judicial exception is not integrated into a practical application. The additional elements listed above that relate to computing components are recited at a high level of generality (i.e., as generic components performing generic computer functions such as communicating, receiving, processing, analyzing, and outputting/displaying data) such that they amount to no more than mere instructions to apply the exception using generic computing components. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea. Additionally, the claims do not purport to improve the functioning of the computer itself. There is no technological problem that the claimed invention solves. Rather, the computer system is invoked merely as a tool. Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, these claims are directed to an abstract idea.
Furthermore, looking at the elements individually and in combination, under Step 2A, Prong Two, the claims as a whole do not integrate the judicial exception into a practical application because they fail to: improve the functioning of a computer or a technical field, apply the judicial exception in the treatment or prophylaxis of a disease, apply the judicial exception with a particular machine, effect a transformation or reduction of a particular article to a different state or thing, or apply the judicial exception beyond generally linking the use of the judicial exception to a particular technological environment. Rather, the claims merely use a computer as a tool to perform the abstract idea(s), and/or add insignificant extra-solution activity to the judicial exception, and/or generally link the use of the judicial exception to a particular technological environment.
Step 2B: Does the Claim Provide an Inventive Concept?
Next, under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered both individually and as an ordered combination, do not amount to significantly more than the abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Simply put, as noted above, there is no indication that the combination of elements improves the functioning of a computer (or any other technology), and their collective functions merely provide conventional computer implementation. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements relating to computing components amount to no more than applying the exception using a generic computing components. Mere instructions to apply an exception using a generic computing component cannot provide an inventive concept. Furthermore, the broadest reasonable interpretation of the claimed computer components (i.e., additional elements) includes any generic computing components that are capable of being programmed to communicate, receive, send, process, analyze, output, or display data. Furthermore, Applicant’s Specification (PGPub. 2020/0294081 [0043; 0059]) refers to a general computer system, but they do not include any technically-specific computer algorithm or code.
Additionally, pursuant to the requirement under Berkheimer, the following citations are provided to demonstrate that the additional elements, identified as extra-solution activity, amount to activities that are well-understood, routine, and conventional. See MPEP 2106.05(d).
Capturing an image (code) with an RFID reader. Ritter, US Patent No. 7734507 (Col. 3, Lines 56-67); “RFID: Riding on the Chip” by Pat Russo. Frozen Food Age. New York: Dec. 2003, vol. 52, Issue 5; page S22.
Receiving or transmitting data over a network. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362; OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014).
Storing and retrieving information in memory. Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Outputting/Presenting data to a user. Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); MPEP 2106.05(g)(3).
Using a machine learning model to determine user segment characteristics for an ad campaign. https://whites.agency/blog/how-to-use-machine-learning-for-customer-segmentation/.
Thus, taken alone and in combination, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea), and are ineligible under 35 USC 101.
Independent device/system claim 1 and CRM claim 5 also contains the identified abstract ideas, with the additional elements of a processor and storage medium, which are a generic computer components, and thus not significantly more for the same reasons and rationale above.
Dependent claims 2-3 further describe the abstract idea. The additional elements of the dependent claims fail to integrate the abstract idea into a practical application and do not amount to significantly more than the abstract idea. Thus, as the dependent claims remain directed to a judicial exception, and as the additional elements of the claims do not amount to significantly more, the dependent claims are not patent eligible.
As such, the claims are not patent eligible.
Invention Could be Performed Manually
It is conceivable that the invention could be performed manually without the aid of machine and/or computer. For example, Applicant claims extracting information from or in a patent document, investigating the relevance between information, and outputting a result. Each of these features could be performed manually and/or with the aid of a simple generic computer to facilitate the transmission of data.
See also Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., and In re Venner, which stand for the concept that automating manual activity and/or applying modern electronics to older mechanical devices to accomplish the same result is not sufficient to distinguish over the prior art. Here, applicant is merely claiming computers to facilitate and/or automate functions which used to be commonly performed by a human.
Leapfrog Enterprises, Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 82 USPQ2d 1687 (Fed. Cir. 2007) "[a]pplying modern electronics to older mechanical devices has been commonplace in recent years…"). The combination is thus the adaptation of an old idea or invention using newer technology that is commonly available and understood in the art.
In In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958), the court held that broadly providing an automatic or mechanical means to replace manual activity which accomplished the same result is not sufficient to distinguish over the prior art. MPEP 2144.04, III Automating a Manual Activity.
MPEP 2144.04 III - Automating a Manual Activity and In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958) further stand for and provide motivation for using technology, hardware, computer, or server to automate a manual activity.
Therefore, the Office finds no improvements to another technology or field, no improvements to the function of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, based on the two-part Alice Corp. analysis, there are no limitations in any of the claims that transform the exception (i.e., the abstract idea) into a patent eligible application.
Claim Rejections - Not an Ordered Combination
None of the limitations, considered as an ordered combination provide eligibility, because taken as a whole, the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.
Claim Rejections - Preemption
Allowing the claims, as presently claimed, would preempt others from processing and storing information. Furthermore, the claim language only recites the abstract idea of performing this method, there are no concrete steps articulating a particular way in which this idea is being implemented or describing how it is being performed.
Claim Rejections - 35 USC § 101 – software per se
Claims 1-3 are rejected under 35 USC §101 because the claimed invention is directed to non-statutory subject matter. Claim 1 is a device/apparatus/system claim and while the preamble recites an “information processing device…” the body of claim 1 does not disclose any structural features. Rather, the body of claim 1 is interpreted as purely software for performing the following steps: an extraction unit configured to extract…; an acquisition unit configured to acquire…; and output unit configured to output… Further, the specification and drawings disclose in Fig. 1 a server that includes various units, however, the figure does NOT disclose any structural components for implementing the claimed extraction unit configured to extract…; an acquisition unit configured to acquire…; and output unit configured to output… Therefore, claims 1-3 are rejected under 35 U.S.C. 101 because it is directed to software which is not a statutory class of invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over: Walters et al. 2025/0086737; in view of Lillemo et al. 2022/0180051; in further view of Perkowski et al. 2016/0048936.
19/408,620 – Claim 1. Walters et al. 2025/0086737 teaches An information processing device comprising (Walters et al. 2025/0086737 [0004 - embodiments include a computer-implemented method…][0005 - embodiments include a computing apparatus that includes a processor and memory…][0037]): an extraction unit configured to extract a characteristic part of a disclosure described in an independent claim in a patent document (Walters et al. 2025/0086737 [0026 – critical feature][0050 - service 210 may then perform feature extraction, including transforming preprocessed textual data into numerical features that can be understood by the ML algorithm using techniques like bag-of-words, TF-IDF (Term Frequency-Inverse Document Frequency), or word, phrase, sentence, or document embeddings …][0064 - The service analyzes both prior art and the newly discovered concept's content using natural language processing techniques (e.g., topic modeling) or keyword extraction algorithms to identify prevalent topics, themes, or subject areas related to the invention….][0094 - analysis service 214 first determines which prior art references are deemed critical based on various factors such as claim breadth, similarity to the invention's claims (Euclidian distance, etc.), and the likelihood of being cited by patent examiners or used against a patent in litigation based on closeness to the newly identified idea. The analysis service 214 categorizes identified prior art into high, medium, and low relevance tiers according to their potential impact on the novelty and inventiveness of the disclosure's claims….][0125 - the scoring analysis includes assessing inventive elements and evaluates the novelty and creativity of the input text by comparing it against a vast repository of document(s) utilizing embeddings. This comparison involves identifying unique features, concepts, or methodologies that differentiate (or similar to) the new idea from existing solutions in the field. …][0126 - he feedback or prompts references specific aspects of the inventive idea that exhibit novel characteristics or significant departures from existing solutions, e.g., based on the similarity analysis and the information provided in a corresponding field. …][0211 - characteristic]); an acquisition unit configured to acquire an investigation result output from a generative model (Walters et al. 2025/0086737 [[0017 - FIG. 11 illustrates an artificial intelligence architecture…][0018 - FIG. 12 illustrates an artificial neural network…][0026 - embodiments are include methods and systems for artificial intelligence (AI) based idea discovery including utilization of prior art comparison with real-time conversations…][0027 - using a machine-learning model…][0035 - system 100 also includes a machine learning (ML) model for idea analysis and categorization, and the ability to compare ideas against prior art using a large language model (LLM) or other ML model…][0043 - Retrieval Augmented Generation (RAG) process is an approach for data acquisition and analysis. The RAG process may be an amalgamation of retrieval-based methods, which involve querying databases to find relevant information, with generative models that can produce new content based on existing knowledge. In embodiments, the prior art system 108 initiates by searching through extensive patent and non-patent literature using advanced search algorithms. It looks for patterns, keywords, or citation networks that could indicate similarities with the newly identified idea. Generative models such as language models (e.g., GPT series) are employed by the prior art system 108 to synthesize new hypotheses about a concept's novelty and potential applications by extrapolating from existing data…][0085; 0122; 0145; 0151-0158; 0161; 0170; 0181; 0183 ]) by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information (Walters et al. 2025/0086737 [0049 - automatically categorize messages based on their relevance to the topic or inventive idea, filtering out irrelevant noise…][0066 - determining if it pertains to products or processes that can be commercialized within an industry's context, examining its relevance and practicality in current market trends, and assessing potential applications in relevant business sectors…][0086 - the analysis service 214 analyzes both new and old sections of a disclosure form, distinguishing between them for accurate assessment when processing text. By identifying newly added or modified text, the analysis service 214 can focus and process changes made by the inventor since the last review, enabling precise feedback on improvements or potential issues introduced in those updates. The analysis service 214 also incorporates information from prior art searches conducted during the examination process to determine if any existing patents or publications could impact the novelty of a disclosure form…][0114]); and an output unit configured to output the investigation result (Walters et al. 2025/0086737 [0053 - API][0068 – user interface][0108 - FIG. 5 provides a display 500 of an example graphical user interface (GUI) that serves as an interactive platform for conveying complex information about emerging ideas to various stakeholders within the organization's intellectual property management framework. In the illustrated example, the display 500 displays information about ideas being discussed within a business system…][0203]).
Walters et al. 2025/0086737 may not expressly disclose the “independent and dependent claim” features, however, Lillemo et al. 2022/0180051 teaches (Lillemo et al. 2022/0180051 [0021 - patent analysis system 102 may construct a document model based on processing the text. For example, patent analysis system 102 may process the text of the document to identify a portion of the document that is a title, a summary, a set of claims (e.g., to identify an independent claim (“IC1”), a statutory class of the independent claim, a dependent claim (“DP1”) with a dependency to a particular independent claim, etc.), or an abstract, among other examples…][0024; 0092 – dependent claims][0028-0029 – independent claims]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Lillemo et al. 2022/0180051. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
Walters et al. 2025/0086737 may not expressly disclose the “investigation” features, however, Perkowski et al. 2016/0048936 teaches (Perkowski et al. 2016/0048936 [0044 - individual claim concepts being investigated…][0106 - patent and technical databases, and related to the subject matter of the claim limitation language strings (CLLS) of a set of patent claims under investigation…][0107 - set of patent claims under investigation…][0221 - FIG. 52 is a schematic diagram illustrating the various information mapping processes supported by the system during its patent claim infringement analysis mode of system operation, wherein patent claim data, prosecution history data, court-specified claim term meaning definitions for common claim terms, and product and/or service data relating to products and/or services under investigation…][1083 - whether or not a product or service under investigation meets the particular claim limitations in the allowed claims…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Perkowski et al. 2016/0048936. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
19/408,620 – Claim 2. Walters et al. 2025/0086737 further teaches The information processing device according to claim 1, wherein the acquisition unit is configured to acquire the investigation result output from the generative model by inputting (Walters et al. 2025/0086737 [0028; 0145 – input / output][0043 – generative models]), to the generative model, at least a portion of descriptions of dependent claims in the patent document (Walters et al. 2025/0086737 [0043; 0056; 0062; 0076; 0095; 0151]).
Walters et al. 2025/0086737 may not expressly disclose the “at least a portion of descriptions of dependent claims in the patent document” features, however, Lillemo et al. 2022/0180051 teaches (Lillemo et al. 2022/0180051 [0005 - using a patent automation tool, a text from a document that matches a structure of patent claims; extract, using the patent automation tool, the structure of patent claims into…][0013 – output / input][0021 - patent analysis system 102 may process the text of the document to identify a portion of the document that is a title, a summary, a set of claims (e.g., to identify an independent claim (“IC1”), a statutory class of the independent claim, a dependent claim (“DP1”) with a dependency to a particular independent claim, etc.), or an abstract, among other examples][0024 - when patent analysis system 102 is generating specification text, based on a method claim, to accompany a flow chart figure, patent analysis system 102 may identify the method claim in the document model and dependencies for dependent claims to describe with regard to the flow chart figure in the document model…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Lillemo et al. 2022/0180051. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
Walters et al. 2025/0086737 may not expressly disclose the “investigation” features, however, Perkowski et al. 2016/0048936 teaches (Perkowski et al. 2016/0048936 [0044 - individual claim concepts being investigated…][0106 - patent and technical databases, and related to the subject matter of the claim limitation language strings (CLLS) of a set of patent claims under investigation…][0107 - set of patent claims under investigation…][0221 - FIG. 52 is a schematic diagram illustrating the various information mapping processes supported by the system during its patent claim infringement analysis mode of system operation, wherein patent claim data, prosecution history data, court-specified claim term meaning definitions for common claim terms, and product and/or service data relating to products and/or services under investigation…][1083 - whether or not a product or service under investigation meets the particular claim limitations in the allowed claims…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Perkowski et al. 2016/0048936. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
19/408,620 – Claim 3. Walters et al. 2025/0086737 further teaches The information processing device according to claim 1, wherein: the extraction unit is configured to acquire the characteristic part output from the generative model by inputting (Walters et al. 2025/0086737 [0043 - involve querying databases to find relevant information, with generative models that can produce new content based on existing knowledge. In embodiments, the prior art system 108 initiates by searching through extensive patent and non-patent literature using advanced search algorithms. It looks for patterns, keywords, or citation networks that could indicate similarities with the newly identified idea. Generative models such as language models (e.g., GPT series) ]), to the generative model, an instruction text for instructing extraction of the characteristic part (Walters et al. 2025/0086737 [0004 - method includes sending a query to a prior art system to identify related prior art for a newly identified idea, and determining a patentability score, a business value score, a detectability score…][0005 - storing instructions that, when executed by the processor, configure the apparatus to send a query to a prior art system to identify related prior art for a newly identified idea…][0028 - reformatted idea is then sent to the prior art comparison system, which may utilize classification to narrow the search and can return various outputs, including idea classification, relevant prior art, questions, business eligibility, patentability score…][0043; 0056; 0062; 0076; 0095; 0151]); and the acquisition unit is configured to acquire the investigation result output from the generative model by inputting, to the generative model, at least one of an instruction text for instructing an investigation of whether a technical feature related to the characteristic part is present in the technical information (Walters et al. 2025/0086737 [0132 - outline the technical features, mechanisms, and potential benefits…][0043; 0056; 0062; 0076; 0095; 0151]) and an instruction text for instructing an investigation of a portion of the technical information where the technical feature related to the characteristic part is present (Walters et al. 2025/0086737 [0043; 0056; 0062; 0076; 0095; 0151]).
Walters et al. 2025/0086737 may not expressly disclose the “investigation” features, however, Perkowski et al. 2016/0048936 teaches (Perkowski et al. 2016/0048936 [0044 - individual claim concepts being investigated…][0106 - patent and technical databases, and related to the subject matter of the claim limitation language strings (CLLS) of a set of patent claims under investigation…][0107 - set of patent claims under investigation…][0221 - FIG. 52 is a schematic diagram illustrating the various information mapping processes supported by the system during its patent claim infringement analysis mode of system operation, wherein patent claim data, prosecution history data, court-specified claim term meaning definitions for common claim terms, and product and/or service data relating to products and/or services under investigation…][1083 - whether or not a product or service under investigation meets the particular claim limitations in the allowed claims…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Perkowski et al. 2016/0048936. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
19/408,620 – Claim 4. Walters et al. 2025/0086737 further teaches An information processing method comprising causing a computer(Walters et al. 2025/0086737 [0004 - embodiments include a computer-implemented method…][0005 - embodiments include a computing apparatus that includes a processor and memory…][0037]) to execute a process of: extracting a characteristic part of a disclosure described in an independent claim in a patent document (Walters et al. 2025/0086737 [0026 – critical feature][0050 - service 210 may then perform feature extraction, including transforming preprocessed textual data into numerical features that can be understood by the ML algorithm using techniques like bag-of-words, TF-IDF (Term Frequency-Inverse Document Frequency), or word, phrase, sentence, or document embeddings …][0064 - The service analyzes both prior art and the newly discovered concept's content using natural language processing techniques (e.g., topic modeling) or keyword extraction algorithms to identify prevalent topics, themes, or subject areas related to the invention….][0094 - analysis service 214 first determines which prior art references are deemed critical based on various factors such as claim breadth, similarity to the invention's claims (Euclidian distance, etc.), and the likelihood of being cited by patent examiners or used against a patent in litigation based on closeness to the newly identified idea. The analysis service 214 categorizes identified prior art into high, medium, and low relevance tiers according to their potential impact on the novelty and inventiveness of the disclosure's claims….][0125 - the scoring analysis includes assessing inventive elements and evaluates the novelty and creativity of the input text by comparing it against a vast repository of document(s) utilizing embeddings. This comparison involves identifying unique features, concepts, or methodologies that differentiate (or similar to) the new idea from existing solutions in the field. …][0126 - he feedback or prompts references specific aspects of the inventive idea that exhibit novel characteristics or significant departures from existing solutions, e.g., based on the similarity analysis and the information provided in a corresponding field. …][0211 - characteristic]); acquiring an investigation result output from a generative model (Walters et al. 2025/0086737 [0017 - FIG. 11 illustrates an artificial intelligence architecture…][0018 - FIG. 12 illustrates an artificial neural network…][0026 - embodiments are include methods and systems for artificial intelligence (AI) based idea discovery including utilization of prior art comparison with real-time conversations…][0027 - using a machine-learning model…][0035 - system 100 also includes a machine learning (ML) model for idea analysis and categorization, and the ability to compare ideas against prior art using a large language model (LLM) or other ML model…][0043 - Retrieval Augmented Generation (RAG) process is an approach for data acquisition and analysis. The RAG process may be an amalgamation of retrieval-based methods, which involve querying databases to find relevant information, with generative models that can produce new content based on existing knowledge. In embodiments, the prior art system 108 initiates by searching through extensive patent and non-patent literature using advanced search algorithms. It looks for patterns, keywords, or citation networks that could indicate similarities with the newly identified idea. Generative models such as language models (e.g., GPT series) are employed by the prior art system 108 to synthesize new hypotheses about a concept's novelty and potential applications by extrapolating from existing data…][0085; 0122; 0145; 0151-0158; 0161; 0170; 0181; 0183]) by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information (Walters et al. 2025/0086737 [0049 - automatically categorize messages based on their relevance to the topic or inventive idea, filtering out irrelevant noise…][0066 - determining if it pertains to products or processes that can be commercialized within an industry's context, examining its relevance and practicality in current market trends, and assessing potential applications in relevant business sectors…][0086 - the analysis service 214 analyzes both new and old sections of a disclosure form, distinguishing between them for accurate assessment when processing text. By identifying newly added or modified text, the analysis service 214 can focus and process changes made by the inventor since the last review, enabling precise feedback on improvements or potential issues introduced in those updates. The analysis service 214 also incorporates information from prior art searches conducted during the examination process to determine if any existing patents or publications could impact the novelty of a disclosure form…][0114]); and outputting the investigation result (Walters et al. 2025/0086737 [0053 - API][0068 – user interface][0108 - FIG. 5 provides a display 500 of an example graphical user interface (GUI) that serves as an interactive platform for conveying complex information about emerging ideas to various stakeholders within the organization's intellectual property management framework. In the illustrated example, the display 500 displays information about ideas being discussed within a business system…][0203]).
Walters et al. 2025/0086737 may not expressly disclose the “independent and dependent claim” features, however, Lillemo et al. 2022/0180051 teaches (Lillemo et al. 2022/0180051 [0021 - patent analysis system 102 may construct a document model based on processing the text. For example, patent analysis system 102 may process the text of the document to identify a portion of the document that is a title, a summary, a set of claims (e.g., to identify an independent claim (“IC1”), a statutory class of the independent claim, a dependent claim (“DP1”) with a dependency to a particular independent claim, etc.), or an abstract, among other examples…][0024; 0092 – dependent claims][0028-0029 – independent claims]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Lillemo et al. 2022/0180051. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
Walters et al. 2025/0086737 may not expressly disclose the “investigation” features, however, Perkowski et al. 2016/0048936 teaches (Perkowski et al. 2016/0048936 [0044 - individual claim concepts being investigated…][0106 - patent and technical databases, and related to the subject matter of the claim limitation language strings (CLLS) of a set of patent claims under investigation…][0107 - set of patent claims under investigation…][0221 - FIG. 52 is a schematic diagram illustrating the various information mapping processes supported by the system during its patent claim infringement analysis mode of system operation, wherein patent claim data, prosecution history data, court-specified claim term meaning definitions for common claim terms, and product and/or service data relating to products and/or services under investigation…][1083 - whether or not a product or service under investigation meets the particular claim limitations in the allowed claims…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Perkowski et al. 2016/0048936. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
19/408,620 – Claim 5. Walters et al. 2025/0086737 further teaches A non-transitory storage medium storing an information processing program (Walters et al. 2025/0086737 [0184]) causing a computer to execute a process of (Walters et al. 2025/0086737 [0004 - embodiments include a computer-implemented method…][0005 - embodiments include a computing apparatus that includes a processor and memory…][0037]): extracting a characteristic part of a disclosure described in an independent claim in a patent document (Walters et al. 2025/0086737 [0026 – critical feature][0050 - service 210 may then perform feature extraction, including transforming preprocessed textual data into numerical features that can be understood by the ML algorithm using techniques like bag-of-words, TF-IDF (Term Frequency-Inverse Document Frequency), or word, phrase, sentence, or document embeddings …][0064 - The service analyzes both prior art and the newly discovered concept's content using natural language processing techniques (e.g., topic modeling) or keyword extraction algorithms to identify prevalent topics, themes, or subject areas related to the invention….][0094 - analysis service 214 first determines which prior art references are deemed critical based on various factors such as claim breadth, similarity to the invention's claims (Euclidian distance, etc.), and the likelihood of being cited by patent examiners or used against a patent in litigation based on closeness to the newly identified idea. The analysis service 214 categorizes identified prior art into high, medium, and low relevance tiers according to their potential impact on the novelty and inventiveness of the disclosure's claims….][0125 - the scoring analysis includes assessing inventive elements and evaluates the novelty and creativity of the input text by comparing it against a vast repository of document(s) utilizing embeddings. This comparison involves identifying unique features, concepts, or methodologies that differentiate (or similar to) the new idea from existing solutions in the field. …][0126 - he feedback or prompts references specific aspects of the inventive idea that exhibit novel characteristics or significant departures from existing solutions, e.g., based on the similarity analysis and the information provided in a corresponding field. …][0211 - characteristic]); acquiring an investigation result output from a generative model (Walters et al. 2025/0086737 [0017 - FIG. 11 illustrates an artificial intelligence architecture…][0018 - FIG. 12 illustrates an artificial neural network…][0026 - embodiments are include methods and systems for artificial intelligence (AI) based idea discovery including utilization of prior art comparison with real-time conversations…][0027 - using a machine-learning model…][0035 - system 100 also includes a machine learning (ML) model for idea analysis and categorization, and the ability to compare ideas against prior art using a large language model (LLM) or other ML model…][0043 - Retrieval Augmented Generation (RAG) process is an approach for data acquisition and analysis. The RAG process may be an amalgamation of retrieval-based methods, which involve querying databases to find relevant information, with generative models that can produce new content based on existing knowledge. In embodiments, the prior art system 108 initiates by searching through extensive patent and non-patent literature using advanced search algorithms. It looks for patterns, keywords, or citation networks that could indicate similarities with the newly identified idea. Generative models such as language models (e.g., GPT series) are employed by the prior art system 108 to synthesize new hypotheses about a concept's novelty and potential applications by extrapolating from existing data…][0085; 0122; 0145; 0151-0158; 0161; 0170; 0181; 0183]) by inputting, to the generative model, an instruction text for instructing an investigation of relevance between the characteristic part and technical information (Walters et al. 2025/0086737 [0049 - automatically categorize messages based on their relevance to the topic or inventive idea, filtering out irrelevant noise…][0066 - determining if it pertains to products or processes that can be commercialized within an industry's context, examining its relevance and practicality in current market trends, and assessing potential applications in relevant business sectors…][0086 - the analysis service 214 analyzes both new and old sections of a disclosure form, distinguishing between them for accurate assessment when processing text. By identifying newly added or modified text, the analysis service 214 can focus and process changes made by the inventor since the last review, enabling precise feedback on improvements or potential issues introduced in those updates. The analysis service 214 also incorporates information from prior art searches conducted during the examination process to determine if any existing patents or publications could impact the novelty of a disclosure form…][0114]); and outputting the investigation result (Walters et al. 2025/0086737 [0053 - API][0068 – user interface][0108 - FIG. 5 provides a display 500 of an example graphical user interface (GUI) that serves as an interactive platform for conveying complex information about emerging ideas to various stakeholders within the organization's intellectual property management framework. In the illustrated example, the display 500 displays information about ideas being discussed within a business system…][0203]).
Walters et al. 2025/0086737 may not expressly disclose the “independent and dependent claim” features, however, Lillemo et al. 2022/0180051 teaches (Lillemo et al. 2022/0180051 [0021 - patent analysis system 102 may construct a document model based on processing the text. For example, patent analysis system 102 may process the text of the document to identify a portion of the document that is a title, a summary, a set of claims (e.g., to identify an independent claim (“IC1”), a statutory class of the independent claim, a dependent claim (“DP1”) with a dependency to a particular independent claim, etc.), or an abstract, among other examples…][0024; 0092 – dependent claims][0028-0029 – independent claims]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Lillemo et al. 2022/0180051. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
Walters et al. 2025/0086737 may not expressly disclose the “investigation” features, however, Perkowski et al. 2016/0048936 teaches (Perkowski et al. 2016/0048936 [0044 - individual claim concepts being investigated…][0106 - patent and technical databases, and related to the subject matter of the claim limitation language strings (CLLS) of a set of patent claims under investigation…][0107 - set of patent claims under investigation…][0221 - FIG. 52 is a schematic diagram illustrating the various information mapping processes supported by the system during its patent claim infringement analysis mode of system operation, wherein patent claim data, prosecution history data, court-specified claim term meaning definitions for common claim terms, and product and/or service data relating to products and/or services under investigation…][1083 - whether or not a product or service under investigation meets the particular claim limitations in the allowed claims…]). Before the effective filing date of the claimed invention, it would have been obvious for one of ordinary skill in the art to have modified Walters et al. 2025/0086737 to include the features as taught by Perkowski et al. 2016/0048936. One of ordinary skill in the art would have been motivated to do so to utilize well known tools and features useful for information processing and storage which should prove to improve user experience, maximize profits, and optimize revenue.
Examiner’s Response to Arguments
Per Applicants’ amendments/arguments, the rejections are withdrawn.
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Applicants’ amendments have necessitated the new grounds of rejection noted above.
Examiner’s Response: Claim Rejections – 35 USC §112
Per Applicants’ amendments/arguments, the rejections are withdrawn.
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Applicants’ amendments have necessitated the new grounds of rejection noted above.
Examiner’s Response: Claim Rejections – 35 USC §101
Per Applicants’ amendments/arguments, the rejections are withdrawn. See notes above for additional reasoning and rationale for dropping 35 USC 101 rejection including Applicant’s amendments, arguments, lack of abstract idea, and practical integration.
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Applicants’ amendments have necessitated the new grounds of rejection noted above.
Regarding Claims 1-15, on page(s) 6-12 of Applicant’s Remarks (dated 12/27/2016), Applicants traverse the 35 USC §101 rejections arguing the following:
Examiner’s Response: Claim Rejections – 35 USC § 102 / § 103
Per Applicants’ amendments/arguments, the rejections are withdrawn. See notes above for additional reasoning and rationale for dropping prior-art rejection including Applicant’s amendments and arguments and unique combination of features and elements not taught by the prior-art without hindsight reasoning.
Applicant's arguments have been considered but are moot in view of the new ground(s) of rejection.
Applicants’ amendments have necessitated the new grounds of rejection noted above.
Regarding Claim X, on page(s) 8-9 of Applicant’s Remarks / After Final Amendments (dated 07/15/2011), Applicant(s) argues that the cited reference(s) (Ellis and Vandermolen) fails to teach, describe, or suggest the amended features. Specifically, Applicant(s) argues that cited reference(s) do not teach, describe, or suggest the following: . With respect, Applicant’s arguments are deemed unpersuasive and the amended feature(s) remain rejected as follows.
With respect, Applicant’s arguments are deemed unpersuasive and the amended feature(s) remain rejected as follows.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
PERTINENT PRIOR ART – Patent Literature
The prior-art made of record and considered pertinent to applicant's disclosure.
Haense et al. 2022/0365956 [claim 2 - extracting technical problem information from a target patent document comprises: inputting the target patent document into a pre-trained extraction model to obtain the technical problem information]
PERTINENT PRIOR ART – Non-Patent Literature (NPL)
The NPL prior-art made of record and considered pertinent to applicant's disclosure.
Nafiseh Nikeghbal, Amir Hossein Kargaran, and Abbas Heydarnoori. 2024. GIRT-Model: Automated Generation of Issue Report Templates. In Proceedings of the 21st International Conference on Mining Software Repositories (MSR '24). Association for Computing Machinery, New York, NY, USA, 407–418. https://doi.org/10.1145/3643991.3644906.
THIS ACTION IS MADE FINAL
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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.
THIS ACTION IS MADE FINAL
Applicant’s amendment necessitated new grounds of rejection and FINAL Rejection.
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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW T. SITTNER whose telephone number is (571) 270-7137 and email: matthew.sittner@uspto.gov. The examiner can normally be reached on Monday-Friday, 8:00am - 5:00pm (Mountain Time Zone). Please schedule interview requests via email: matthew.sittner@uspto.gov
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/MATTHEW T SITTNER/
Primary Examiner, Art Unit 3629b
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