DETAILED ACTION
Claims 1 – 4 and 6 – 19 are pending.
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 .
Response to Amendment
With regard to the Non-Final Office Action from 24 September 2024, the Applicant has filed a response on 18 December 2025.
Response to Arguments
With regard to the 35 U.S.C. 101 given to the claims for being directed to a judicial exception without significantly more, the Applicant disagrees with the Examiner’s assertion. The Applicant indicates (Remarks: page 8 par 1) that the claims recite a)steps that cannot be performed at all in the human mind and b) steps that cannot be practically performed in the human mind in the absence of being equipped to perform the claim limitations. Regarding a), a human can physically store a plurality of contract documents in a contract document database, the contract document database simply being a tool that is used to perform the storing. A human can also display and output notification contents, once again, the graphical user interface simply being a computing tool that is applied to performing this task. The actual tasks, as have been indicated here, can mentally be performed by a human. Regarding b), a human may extract contract document information and contract status information from a plurality of documents, by reading through the documents and making notes of the status information. Based on these Applicant notes, the Examiner maintains that these mentioned-aspects of the claims can indeed be performed mentally.
The Applicant indicates further (Remarks: page 8 par 4 – page 9 par 1) that the claims are allowable under 35 U.S.C. 101 when the claims improve the functioning of a computer itself or any other technology or technical field. The Applicant refers to the Remarks from 10 September 2025 where it was indicated that the claims are aimed at improving the information processing devices. The Applicant has alluded to the Specification for mentioning the improvements, indicating that they needn’t be mentioned directly in the claims. By simply mentioning that the claims provide an improvement on information processing devices, the Examiner maintains here that merely mentioning that an improvement to information processing devices being provided, simply serves as a post-activity solution.
The Applicant has also indicated (Remarks: page 9 par 2) that the claims have now been amended to recite additional steps, with some of the recited features, such as the morphological analysis or syntax analysis cannot be performed in the human mind but are instead specific, algorithmic test processing techniques used in computer science, not akin to human mental activity. The Examiner indicates here that, a human may analyse the structure of words to identify different morphemes in the words. Syntax analysis involves checking and understanding sequences of words to understand the structure and functions of the basic components of the sequences. These particular features can be performed mentally.
The Examiner hereby maintains the 35 U.S.C. 101 rejection.
With regard to the 35 U.S.C. 103 rejection given to the claims, the Applicant indicates (Remarks: page 11 par 1) that a person of ordinary skill in the art would have understood that combining the Rajkumar et al. and Harmes et al. would not result in a system that dynamically analyses the text content of an extracted document using the NLP techniques for identifying risk factors as are currently claimed. The Examiner indicates that these newly-amended limitations would be addressed by their current presentation.
The Applicant also indicates (Remarks: page 11 par 2) that the prior art relied upon to fill the gap of ‘risk identification’ provide no suggestion to combine the references to arrive at the claimed process of extracting information based on a condition followed by performing NLP analysis of content. The Examiner indicates here that based on the current amendment to the claims which currently raise new grounds of rejection, the arguments to the Examiner’s claim rejection are considered moot. The claims will be addressed by their current presentation in its section.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 4 and 6 – 19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Independent claims 1 and 7 recite the limitations of receiving a plurality of stored contract documents that are in a contract document database, extract contract document information that includes contract document identification, document name and contents, and extract contract status information that indicates a contract status of each of the contract documents, receive an analysis condition to analyse the contract documents, extract a contract document that contains contract document information or status information that matches the analysis condition, analyse the content of the extracted contract document to identify risk factors that include a risk clause and a predetermined condition and to detect notification matter by performing one of keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data of the document, and then display notification contents that correspond to the detected notification matter using a graphical user interface.
Apart from mentioning the non-transitory computer-readable medium, processor, the information processing apparatus, the document processing apparatus, the graphical user interface and the communication interface, nothing in the claims precludes the claimed technique from being performed in the human mind. The entire process involves: data gathering for accepting the plurality of contract documents, the analysis condition, and for extracting the contract document information and contract status information, data analysis for analysis the extracted contract document to be able to detect a notification matter, and data presentation for displaying and outputting notification contents. A human may begin by receiving a collection of contract documents, receiving contract document information and contract status information, receive an analysis condition that specifies how to read through the obtained contract document, apply the analysis condition to analyse the extracted contract document by performing one of several known textual analyses in order to be able to identify risk factors as risk clauses present in the document, a predetermined condition and a subject that requires that a notification be presented, and then write out an analysis report as a series of notification contents based on the subject that requires that a notification be presented. Nothing in the claim precludes it from being performed in a human mind the with aid of a pen and paper. The claims hereby recite a mental process.
This judicial exception is not integrated into a practical application as the claims simply teach of gathering, analysing and presenting data. While the claims do mention a computer-readable medium, execution by a processor, and a graphical user interface, these are presented in generic terms.
The invention is not tied to any particular defining structure and simply provides instructions to apply the judicial exception. The techniques can be performed by a generic computer which would be presented as a tool to implement the abstract idea (classifiable as automation of the mental process steps). The Specification in [0013] provides a CPU or the like as part of an information processing apparatus, and a display unit in [0033], presented in very generic forms, such that a general-purpose computer could be used to address the claim limitations. The Specification in [0016] and [0020] provides the use of machine learning models to extract information from the contents of the contract document information and to analyse a contract document, without specifying the particular machine learning algorithms that are being applied, providing that a random or general-purpose machine learning model could be applied to each of the two machine learning models recited in the claims. Extracting a contract document from a plurality of contract documents to match a specific condition could be mentally performed by a human who reads through a collection of contract documents to find those of them that satisfy a particular condition. Analysing the extracted contract document and then detecting a notification matter could be mentally performed by a human who reads the extracted contract document to look for the sections of the contract that indicate information worthy of notification. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the invention is not tied to a practical application.
The claims provide techniques that amount to no more than mere instructions that apply the judicial exception which can be performed by a generic device. Merely mentioning the computer-readable storage medium, processor, information processing and document processing apparatus, communication interface, and the output unit, amount to no more than general-purpose hardware used as tools to implement the abstract idea and do not provide any particular application other than applying them for the purpose of implementing a judicial exception. Mere instructions to apply an exception using a generic device cannot provide an inventive concept. Claims 1 and 7 are not eligible.
Independent claim 2 recites the limitations of receiving a plurality of stored contract documents that are in a contract document database, extract contract document information that includes contract document identification, document name and contents, and extract contract status information that indicates a contract status of each of the contract documents, receive an analysis condition to analyse the contract documents based on at least one of a numerical value, a contract and an organisation, extract a contract document that contains contract document information or status information that matches the analysis condition, analyse the content of the extracted contract document to identify risk factors that include a risk clause and a predetermined condition, and to detect notification matter by performing one of keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data of the document, and then display notification contents that correspond to the detected notification matter using a graphical user interface.
Apart from mentioning the non-transitory computer-readable medium, processor, the information processing apparatus, the document processing apparatus, the graphical user interface and the communication interface, nothing in the claims precludes the claimed technique from being performed in the human mind. The entire process involves: data gathering for accepting the plurality of contract documents, the analysis condition, and for extracting the contract document information and contract status information, data analysis for analysis the extracted contract document to be able to detect a notification matter, and data presentation for displaying and outputting notification contents. A human may begin by receiving a collection of contract documents, receiving contract document information and contract status information, receive an analysis condition that specifies how to read through the obtained contract document regarding parameters such as a numerical value, the contract and the organisation, apply the analysis condition to analyse the extracted contract document by performing one of several known textual analyses in order to be able to identify risk factors as risk clauses present in the document, a predetermined condition and a subject that requires that a notification be presented, and then write out an analysis report as a series of notification contents based on the subject that requires that a notification be presented. Nothing in the claim precludes it from being performed in a human mind the with aid of a pen and paper. The claims hereby recite a mental process.
This judicial exception is not integrated into a practical application as the claims simply teach of gathering, analysing and presenting data. While the claim does mention a computer-readable medium, execution by a processor, and a graphical user interface, these are presented in generic terms.
The invention is not tied to any particular defining structure and simply provides instructions to apply the judicial exception. The techniques can be performed by a generic computer which would be presented as a tool to implement the abstract idea (classifiable as automation of the mental process steps). The Specification in [0013] provides a CPU or the like as part of an information processing apparatus, and a display unit in [0033], presented in very generic forms, such that a general-purpose computer could be used to address the claim limitations. The Specification in [0016] and [0020] provides the use of machine learning models to extract information from the contents of the contract document information and to analyse a contract document, without specifying the particular machine learning algorithms that are being applied, providing that a random or general-purpose machine learning model could be applied to each of the two machine learning models recited in the claims. Extracting a contract document from a plurality of contract documents to match a specific condition could be mentally performed by a human who reads through a collection of contract documents to find those of them that satisfy a particular condition. Analysing the extracted contract document and then detecting a notification matter could be mentally performed by a human who reads the extracted contract document to look for the sections of the contract that indicate information worthy of notification. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the invention is not tied to a practical application.
The claim provides techniques that amount to no more than mere instructions that apply the judicial exception which can be performed by a generic device. Merely mentioning the computer-readable storage medium, processor, information processing and document processing apparatus, communication interface, and the output unit, amount to no more than general-purpose hardware used as tools to implement the abstract idea and do not provide any particular application other than applying them for the purpose of implementing a judicial exception. Mere instructions to apply an exception using a generic device cannot provide an inventive concept. Claim 2 is not eligible.
Claim 3 provides a communication device for communication with a document processing apparatus through a communication interface, along with a processor and a non-transitory computer-readable medium. The Specification in [0013] provides a CPU or the like, a storage medium such as a hard disk drive and a communication unit as part of an information processing apparatus, these being generic by their recitation, and thereby serve as general-purpose tools to perform the abstract idea. A human is able to enact a communication or transfer of information from one location to another, and this does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claim 4 provides a communication device for communication with a document processing apparatus through a communication interface, along with a processor and a non-transitory computer-readable medium. The Specification in [0013] provides a CPU or the like, a storage medium such as a hard disk drive and a communication unit as part of an information processing apparatus, these being generic by their recitation, and thereby serve as general-purpose tools to perform the abstract idea. A human is able to enact a communication or transfer of information from one location to another, and this does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claim 6 provides extracting particular contract document information through performing one of several methods. A human may obtain needed information from contract documents by performing a search for predetermined keywords, morphological, syntactic, semantic or context analysis. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 8 and 12 provide outputting notification content corresponding to the notification matter by using graphs. A human may present notification matter in graphical form. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 9 and 13 provide that the predetermined condition includes a position of a party of the contract document. A human may read a written predetermined condition that indicates the position of a party of the contract document. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 10 and 14 provide the extraction of the plurality of contract documents in designated units selected from contract document units and provision units. A human may extract contract documents based on pre-set designated units for the purpose of proper organisation. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 11 and 15 provide displaying a provision display field in which a search result is displayed. A human may write an appropriate search text on a provision-display section set aside on an analysis report. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 16 and 18 provide that the information indicating a contract status includes information related to the term of a contract, and that extracting the contract document containing the information that matches a condition related to terms of the contract are in response to meeting the condition. A human may extract a contract document based on contracts that contain information that matches to a condition related to certain disclosed terms of a contract. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
Claims 17 and 19 provide teaching for displaying a switching button for switching between searching in the contract document or in provision units of the contract documents. A human can receive a note that indicates if the human should search in the contract document or in provision units. This does not integrate any practical application nor does it provide any additional element sufficient to amount to more than the mentioned judicial exception.
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 (i.e., changing from AIA to pre-AIA ) 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, 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, 2, 3, 4, 7, 9, 10, 13, 14, 16, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar et al. (US 2008/0306784 A1: hereafter — Rajkumar) in view of Harmes et al. (US 2004/0085355 A1: hereafter — Harmes) further in view of Brannon et al. (US 2020/0202271 A1: hereafter — Brannon), and further in view of Clark et al. (US 2015/0106276 A1: hereafter — Clark).
For claim 1, Rajkumar discloses a non-transitory computer-readable medium storing a program including instructions that, when executed by a processor, cause an information processing apparatus connected to a document processing apparatus through a communication interface (Rajkumar: [0007] — a method for analysing clauses of business documents; [0010] — a storage device coupled to a processor; [0052] — a communication mechanism and communication device to enable communication; [0053] — a computer-readable medium; [0023] — a contract as a business document; FIG. 3 — showing an interface for communicating the information of the contracts to a human user), to:
accept a plurality of contract documents to be stored in a contract document database (Rajkumar: [0007] — ‘storing a plurality of business documents used by the enterprise in the database, each of the plurality of business document stored in the database including a plurality of clauses’ (indicating stored contract documents in a contract document database));
extract, from the plurality of contract documents, contract document information and [[contract status information]], the contract document information including at least a contract document identification, [[a contract document name, and contents of the contract document, respectively, and the contract status information indicating a contract status of each of the plurality of contract documents]] (Rajkumar: FIG. 7 Part 722 — a display of the contract number which serves as a contract document identification for each contract document being extracted out for viewing);
accept an analysis condition for analyzing the plurality of contract documents stored in the contract document database (Rajkumar: [0045], FIG. 6 — performing a clause analysis report (the clause being the analysis condition) so as to display documents/contracts that satisfy the clause (the presentation of the system with the clause is an acceptance of the analysis condition for analysing the plurality of contracts); [0007] — ‘storing a plurality of business documents used by the enterprise in the database, each of the plurality of business document stored in the database including a plurality of clauses’ (indicating stored contract documents in a contract document database)).
The reference of Rajkumar fails to teach the further limitations of this claim, for which the reference of Harmes is now introduced to teach as:
extract, from the plurality of contract documents, contract document information and contract status information, the contract document information including at least a contract document identification, a contract document name, and contents of the contract document, respectively, and the contract status information indicating a contract status of each of the plurality of contract documents (Harmes: FIGURE 2, [0033] — contract documents are shown to be arranged based on status information that indicate a contract status (the arrangement based on a contract status is indicative of an extraction of contract status information for the purpose of such arrangement according to the status) and the status can also be organised by a name of party; [0040], FIGUREs 4 & 7 — showing the display of documents and the extraction of the document names for displaying the contract documents; [0021] — the user can retrieve information such as contract document and view contents on the display (the display of contents is an indication of the extraction of the contents of the document));
extract, from the contract document database, a contract document containing contract document information and/or contract status information that matches to the analysis condition (Harmes: [0033] — extracting and organising contract documents based on contract status, such that the documents can be arranged by their contract status being active or executed, or even as being in effect or expired (the type of status here is seen as the analysis condition for the contract status, and particular contract documents that match these are extracted for display)).
The reference of Rajkumar provides teaching for extraction of a contract document identification as well as accepting a clause as an analysis condition for analysing a plurality of contract documents stored in a contract document database. It differs from the claimed invention in that the claimed invention now further provides teaching for the extraction of contract document information and contract status information, and the extraction of a contract document that contains contract status information matching an analysis condition. This isn’t new to the art as the reference of Harmes is seen to teach above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known teaching of Harmes which extracts a contract document which contains contract status information that match an analysis condition, with the teaching of the accepting an analysis condition for analysing contract documents, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result of presenting contract documents that satisfy a particular indicated condition to a user, without having the user manually have to look through each of the contract documents. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
The combination of Rajkumar in view of Harmes fails to disclose the further limitations of this claim, for which the reference of Brannon is now introduced to teach as:
analyze contents of the extracted contract document including text data of the extracted contract document by performing at least one of keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data, to identify risk factors including a risk clause and a predetermined condition, and detect a notification matter for an analysis result based on the identified risk factors (Brannon: [0013] — analysing one or more documents defining one or more obligations (the obligations being the predetermined condition) and determining a notification obligation (detecting the notification matter for an analysis result based on a predetermined condition); [0519] — performing risk analysis techniques; [0536] — performing text analysis on a contract to determine contract terms); and
display and output, via a graphical user interface, notification contents corresponding to the detected notification matter via a graphical user interface (Brannon: [0013] — generating a task associated with the notification obligation (the generated task is the notification content); [0626], [0628] — an interface for displaying documents; [0759] — a graphical user interface for implementing the limitation).
The combination of Rajkumar in view of Harmes provides teaching for the extraction of contract documents that match an analysis condition. This differs from the claimed invention in that the claimed invention now further provides teaching for analysing the extracted contract document to identify a notification matter for an analysis result. The reference of Brannon is however introduced to teach this, as provided above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known the teaching of Brannon which analyses a document to detect tasks to be presented to a user, with the teaching of extracting a contract document that satisfies a condition as taught by the combination of Rajkumar in view of Harmes, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result of presenting a user viewing the document with available tasks that should be performed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
The combination of Rajkumar in view of Harmes further in view of Brannon fails to disclose the further limitations of this claim, for which the reference of Clark is now introduced to teach as:
analyze contents of the extracted contract document including text data of the extracted contract document by performing at least one of keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data, to identify risk factors including a risk clause and a predetermined condition, and detect a notification matter for an analysis result based on the identified risk factors (Clark: [0045] — surfacing potential risk and liability across all contracts (indicating a presentation or display of detected potential risks in contracts); [0053] — analysing a contract by analysing clauses in the contracts through parsing (indicating a syntax and keyword analysis) for the purpose of identifying clauses with risk (based on a risk score)).
The combination of Rajkumar in view of Harmes further in view of Brannon provides teaching for the extraction of a contract document identification as well as accepting a clause as an analysis condition for analysing a plurality of contract documents stored in a contract document database. It differs from the claimed invention in that the claimed invention now further provides teaching for the analysing contents of the contract by performing a textual analysis on the contract to identify a risk clause. This is however not new to the art as the reference of Clark is seen to provide above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known teaching of the combination of Rajkumar in view of Harmes further in view of Brannon which extracts a contract document which contains contract status information that match an analysis condition, with the teaching of detecting a risk clause in a contract based on certain textual analysis as taught by Clark, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result of being able to inform users and enterprises of potential liabilities to look out for within a contract, leading the users or enterprises to quickly work on addressing them. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
For claim 2, Rajkumar discloses a non-transitory computer-readable medium storing a program including instructions that, when executed by a processor, causes an information processing apparatus connected to a document processing apparatus through a communication interface (Rajkumar: [0007] — a method for analysing clauses of business documents; [0010] — a storage device coupled to a processor; [0052] — a communication mechanism and communication device to enable communication; [0053] — a computer-readable medium; [0023] — a contract as a business document; FIG. 3 — showing an interface for communicating the information of the contracts to a human user), to:
accept a plurality of contract documents to be stored in a contract document database (Rajkumar: [0007] — ‘storing a plurality of business documents used by the enterprise in the database, each of the plurality of business document stored in the database including a plurality of clauses’ (indicating stored contract documents in a contract document database));
extract, from the plurality of contract documents, contract document information [[and contract status information]], the contract document information including at least a contract document identification, [[a contract document name, and contents of the contract document, respectively, and the contract status information indicating a contract status of each of the plurality of contract documents]] (Rajkumar: FIG. 7 Part 722 — a display of the contract number which serves as a contract document identification for each contract document being extracted out for viewing);
accept an analysis condition for analyzing the plurality of contract documents and a method for displaying an analysis result, the analysis condition including at least one of a numerical value, a contract, and an organization (Rajkumar: [0045], FIG. 6 — performing a clause analysis report (the clause being the analysis condition) so as to display documents/contracts that satisfy the clause (the presentation of the system with the clause is an acceptance of the analysis condition for analysing the plurality of contracts); [0031] — ‘The Contract Type 314 attribute may be selected at 314, as may be the Organization (e.g., company name; in this exemplary and illustrative case, Vision Enterprises). The organization LOY allows the user to further narrow the search criteria to cause the generated business document clause analysis report to include only business documents relating to the selected organization’ (to show that the analysis result could be displayed according to an organisation analysis condition)).
The reference of Rajkumar fails to teach the further limitations of this claim, for which the reference of Harmes is now introduced to teach as:
extract, from the plurality of contract documents, contract document information and contract status information, the contract document information including at least a contract document identification, a contract document name, and contents of the contract document, respectively, and the contract status information indicating a contract status of each of the plurality of contract documents (Harmes: FIGURE 2, [0033] — contract documents are shown to be arranged based on status information that indicate a contract status (the arrangement based on a contract status is indicative of an extraction of contract status information for the purpose of such arrangement according to the status) and the status can also be organised by a name of party; [0040], FIGUREs 4 & 7 — showing the display of documents and the extraction of the document names for displaying the contract documents; [0021] — the user can retrieve information such as contract document and view contents on the display (the display of contents is an indication of the extraction of the contents of the document));
extract, from the contract document database, a contract document containing contract document information and/or contract status information matching one or more of the numerical value, the contract, and the organization included in the analysis condition (Harmes: [0033] — extracting and organising contract documents based on contract status, such that the documents can be arranged by their contract status being active or executed, or even as being in effect or expired (the type of status here is seen as the analysis condition for the contract status, and particular contract documents that match these are extracted for display, and the status being organised by the name of party or type of contract is contract status information about the contract itself)).
The same motivation for incorporating the Harmes reference as applied to claim 1 above is applicable here still.
The combination of Rajkumar in view of Harmes fails to disclose the further limitations of this claim, for which the reference of Brannon is now introduced to teach as:
analyze contents of the extracted contract document and the analysis condition document, including text data of the extracted contract document, by performing at least one or keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data, to identify [[risk factors including a risk clause and]] a predetermined condition, and detect a notification matter for the analysis result based on the identified risk factors (Brannon: [0013] — analysing one or more documents defining one or more obligations (the obligations being the analysis condition, thereby teaching of the analysis of the analysis condition document) and determining a notification obligation (detecting the notification matter for an analysis result based on a predetermined condition)); and
display and output, via a graphical user interface, notification contents corresponding to the detected notification matter (Brannon: [0013] — generating a task associated with the notification obligation (the generated task is the notification content); [0626], [0628] — an interface for displaying documents; [0759] — a graphical user interface for implementing the limitation).
The same motivation for incorporating the Brannon reference as applied to claim 1 above is applicable here still.
The combination of Rajkumar in view of Harmes further in view of Brannon fails to disclose the further limitation of this claim, for which the reference of Clark is now introduced to teach as:
analyze contents of the extracted contract document and the analysis condition document, including text data of the extracted contract document by performing at least one of keyword analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis on the text data, to identify risk factors including a risk clause and a predetermined condition, and detect a notification matter for the analysis result based on the identified risk factors (Clark: [0045] — surfacing potential risk and liability across all contracts (indicating a presentation or display of detected potential risks in contracts); [0053] — analysing a contract by analysing clauses in the contracts through parsing (indicating a syntax and keyword analysis) for the purpose of identifying clauses with risk (based on a risk score)).
analyze the extracted contract document and the analysis condition to identify risk factors and a predetermined condition, and detect a notification matter for the analysis result (Clark: [0061] — machine learning algorithm for analysing electronic documents such that the documents can be any specific type of legal documents such as risk regarding legal contracts (indicating the identification of risk factors); [00100] — associating a plurality of documents with a transactional document type, the transactional document type being one as risk regarding legal contracts (indicating the identification of risk factors)).
The same motivation for incorporating the Clark reference as applied to claim 1 above is applicable here still.
For claim 3, the limitations of claim 1 are incorporated and the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark discloses an information processing apparatus comprising:
a communication device configured to communicate with a document processing apparatus through a communication interface (Rajkumar: [0052] — a communication mechanism and communication device to enable communication);
a processor (Rajkumar: [0010] — a processor); and
the non-transitory computer-readable medium according to claim 1 (Rajkumar: [0053] — a computer-readable medium).
For claim 4, the limitations of claim 2 are incorporated and the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark discloses an information processing apparatus comprising:
a communication device configured to communicate with a document processing apparatus through a communication interface (Rajkumar: [0052] — a communication mechanism and communication device to enable communication);
a processor (Rajkumar: [0010] — a processor); and
the non-transitory computer-readable medium according to claim 2 (Rajkumar: [0053] — a computer-readable medium).
As for claim 7, method claim 7 and computer-readable medium claim 1 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 7 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 1.
For claim 9, claim 1 is incorporated and the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark discloses the non-transitory computer-readable medium, wherein the predetermined condition further includes a position of a party of the contract document (Rajkumar: [0008] — attributes which could be searched for include buyer, seller, supplier (these being positions of the involved party)).
For claim 10, claim 1 is incorporated and the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark discloses the non-transitory computer-readable medium, wherein the contract document from the contract document database includes extracting the plurality of the contract documents in designated units selected from contract document units and provision units (Rajkumar: [0007] — identifying stored business documents that satisfy the occurrences of the clauses (teaching of being able to view or extract contract documents, as document units); [0025] — being able to find all instances of business documents that make use of a certain selected clause or clauses (teaching of extracting documents based on the clauses as provision units)).
As for claim 13, method claim 13 and computer-readable medium claim 9 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 13 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 9.
As for claim 14, method claim 14 and computer-readable medium claim 10 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 14 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 10.
For claim 16, claim 1 is incorporated and the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark discloses the non-transitory computer-readable medium, wherein:
the contract status information includes information related to a term of a contract (Rajkumar: [0025] — being able to find all instances of business documents that make use of a certain selected clause or clauses (the clauses are taken as business contract terms), so as to be able to find if some business document clauses or terms should be amended; and
wherein the extracting the contract document from the contract document database includes extracting the contract document information that matches to a condition related to the term of the contract in response to meeting the condition (Rajkumar: [0025] — being able to find all instances of business documents that make use of a certain selected clause or clauses (the clauses are taken as business contract terms), so as to be able to find if some business document clauses or terms should be amended; [0028] — searching for documents based on the clauses (terms) of interest (in order to be able to extract such documents)).
As for claim 18, method claim 18 and computer-readable medium claim 16 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 18 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 16.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar (US 2008/0306784 A1) in view of Harmes (US 2004/0085355 A1) further in view of Brannon (US 2020/0202271 A1), further in view of Clark (US 2015/0106276 A1), as applied to claim 1, and further in view of Yamamoto et al. (US 2010/0211595 A1: hereafter — Yamamoto).
For claim 6, claim 5 is incorporated but the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark fails to disclose the limitation of this claim, for which Yamamoto is now introduced to teach as:
the non-transitory computer-readable medium, wherein the instructions further cause the information processing apparatus to:
extract the contract document information by performing any of predetermined keywords analysis, morphological analysis, syntax analysis, semantic analysis, and context analysis and labeling (Yamamoto: [0176] — performing morphological analysis to be able to extract interest data (the interest data being document information)).
The combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark provides teaching for the extracting information of interest from contract documents, but differs from the claimed invention in that the claimed invention further provides teaching for the extraction of the information of interest through performing morphological analysis. This is however not new to the art as the reference of Yamamoto is seen to teach above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known the teaching of performing a morphological analysis as performed by Yamamoto, with the teaching of extracting information of interest from contract documents as taught by the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result that the use of morphological analysis would provide identifying several other individual morpheme units that can be attributed to a base word, resulting in useful information similar to the base word, thereby being able to obtain further information through words that are morphologically similar to keywords being searched for, rather than finding only the information particular to the searched keywords. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Claims 8 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar (US 2008/0306784 A1) in view of Harmes (US 2004/0085355 A1) further in view of Brannon (US 2020/0202271 A1) further in view of Clark (US 2015/0106276 A1), as applied to claims 1 and 7, and further in view of Dimerman (US 2019/0138571 A1).
For claim 8, claim 1 is incorporated but the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark fails to disclose the limitation of this claim. The reference of Dimerman is now introduced to teach the non-transitory computer-readable medium, wherein the outputting includes outputting the notification contents corresponding to the detected notification matter by using graphs (Dimerman: [0027] — generating and causing displaying with a contract administrator, a time curve graph that shows similarities between contract documents).
The combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark provides teaching for outputting and displaying a notification after analysing a contract document, but differs from the claimed invention in that the claimed invention further provides teaching for presenting the notification contents using graphs. This is however not new to the art as the reference of Dimerman is seen to teach above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known the teaching of presenting the notification contents using graphs as taught by Dimerman, with the teaching of outputting and displaying a notification after analysing a contract document as taught by the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result of the graphical appeal which a graph could have in engaging the user viewing it, over a textual form that the user may not be willing to read. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As for claim 12, method claim 12 and computer-readable medium claim 8 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 12 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 8.
Claims 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar (US 2008/0306784 A1) in view of Harmes (US 2004/0085355 A1) further in view of Brannon (US 2020/0202271 A1) further in view of Clark (US 2015/0106276 A1), as applied to claims 1 and 7, and further in view of Khatib et al (US 2020/0099530 A1: hereafter — Khatib).
For claim 11, claim 1 is incorporated but the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark fails to disclose the limitation of this claim. The reference of Khatib is now introduced to teach
the non-transitory computer-readable medium, wherein the outputting includes displaying a provision display field in which a search result is displayed (Khatib: [0081] — receiving a document or a portion of a document and outputting a classification of one or more provisions or sections of the document that indicates a particular type of clause (the clause being what was searched for in order to produce the output provisions)).
The combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark provides teaching for displaying notification contents upon analysing a contract document, but differs from the claimed invention in that the claimed invention further provides teaching for displaying a provisions-display field where search results are displayed. This is however not new to the art as the reference of Khatib is seen to teach above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known the teaching of displaying a provisions-display field where search results are displayed as taught by Khatib, with the teaching of displaying notification contents upon analysing a contract document as taught by the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result that the user viewing the presented information is being presented with the most crucial information pertaining to the contract document, as indicated by the document’s provisions. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As for claim 15, method claim 15 and computer-readable medium claim 11 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 15 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 11.
Claims 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Rajkumar (US 2008/0306784 A1) in view of Harmes (US 2004/0085355 A1) further in view of Brannon (US 2020/0202271 A1) further in view of Clark (US 2015/0106276 A1), as applied to claims 1 and 7, and further in view of YOSHIJI et al (JP 2004199407 A: hereafter — Yoshiji (applying the attached English translation)).
For claim 17, claim 1 is incorporated but the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark fails to disclose the limitation of this claim. The reference of Yoshiji is now introduced to teach
the non-transitory computer-readable medium, wherein the displaying includes displaying a switching button for switching between searching in the contract document and searching in provision units of the contract documents (Yoshiji: [0118] — a display switching button which switches a display method of obtaining a search result, such that the display can be provided for displaying a document in a normal document mode, or for displaying annotation view (taken here as the provision units)).
The combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark provides teaching for displaying notification contents upon analysing a contract document, but differs from the claimed invention in that the claimed invention further provides teaching for displaying a switching button for switching between searching in the contract document or searching in provision units. The display of a switching button for switching between views of a document is however not new to the art as the reference of Yoshiji goes to show above.
Hence, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to combine the known the teaching of displaying a switching option for a user to be able to switch between viewing a document or viewing annotations of the document as taught by Yoshiji, with the teaching of extracting and analysing a contract document as taught by the combination of Rajkumar in view of Harmes further in view of Brannon and further in view of Clark, to thereby come up with the claimed invention. The combination of both prior art elements would have provided the predictable result of granting a user the option to view different modes of the extracted document, either the document as a whole, or to view particular interested sectionsin the document. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
As for claim 19, method claim 19 and computer-readable medium claim 17 are related as method detailing procedures taken to implement the available computer-programmable instructions. Accordingly, claim 19 is similarly rejected under the same rationale as applied above with respect to computer-readable medium claim 17.
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to OLUWADAMILOLA M. OGUNBIYI whose telephone number is (571)272-4708. The Examiner can normally be reached Monday – Thursday (8:00 AM – 5:30 PM Eastern Standard Time).
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, PARAS D SHAH can be reached at (571) 270-1650. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OLUWADAMILOLA M OGUNBIYI/Examiner, Art Unit 2653
/Paras D Shah/Supervisory Patent Examiner, Art Unit 2653
03/23/2026